Miscellaneous Changes in Patent Practice

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No: 950620162-6014-02]

RIN 0651-AA75

Miscellaneous Changes in Patent Practice

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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

of practice in patent cases to implement a number of miscellaneous

changes proposed in the rulemaking entitled ``Changes to Implement 18-

Month Publication of Patent Applications'' (Notice of Proposed

Rulemaking), published in the Federal Register at 60 FR 42352 (August

15, 1995), and in the Patent and Trademark Office Official Gazette 1177

Off. Gaz. Pat. Office 61 (August 15, 1995), that are not directly

related to the 18-month publication of patent applications. While the

proposed rule changes in the Notice of Proposed Rulemaking were

designed primarily to implement the changes in practice related to the

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

miscellaneous proposed changes clarify current rules of practice,

without regard to the publication of patent applications.

DATES: Effective Date: September 23, 1996.

Applicability Date: Sections 1.52 (a) and (b), 1.58, 1.72 (b), 1.75

(g), (h) and (i), 1.77, 1.84 (c), (f), (g) and (x), 1.96, 1.154, and

1.163 of 37 CFR apply to applications filed on or after September 23,

1996.

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

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

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

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

Assistant Commissioner for Patents, Washington, D.C. 20231. For copies

of the forms discussed in this final rule package, contact the Customer

Service Center of the Office of Initial Patent Examination at (703)

308-1214.

SUPPLEMENTARY INFORMATION: This final rule package is designed to

implement the miscellaneous changes set forth in the proposed

rulemaking entitled ``Changes to Implement 18-Month Publication of

Patent Applications'' (Notice of Proposed Rulemaking) that are not

directly related to 18-month publication of patent applications and

that are considered desirable even in the absence of an 18-month

publication system.

The Notice of Proposed Rulemaking indicated that, in addition to

implementing the 18-month publication of patent applications, the

Office also proposed to: (1) Clarify which applications claiming the

benefit of prior applications, or which prior applications for which a

benefit is claimed in a later application, will be preserved in

confidence; (2) amend the rules pertaining to the format and standards

for application papers and drawings to improve the standardization of

patent applications; (3) provide for those instances in which

inventions of a pending application or patent under reexamination and

inventions of a patent held by a single party are not identical, but

not patentably distinct; (4) clarify the practice for the delivery or

mailing of patents; (5) expedite the entry of international

applications into the national stage; and (6) amend a number of rules

for consistency and clarity. The Notice of Proposed Rulemaking stated

that these proposed rule changes may be adopted as final rules even in

the absence of an 18-month publication system, and advised interested

persons to comment on any proposed rule change, regardless of whether

H.R. 1733 is enacted.

To avoid delays in the implementation of rule changes considered

desirable even in the absence of an 18-month publication system, this

final rule package provides for changes to 37 CFR 1.12(c), 1.14, 1.52

(a) and (b), 1.54, 1.58, 1.62 (e) and (f), 1.72(b), 1.75(g), 1.77, 1.78

(a) and (c), 1.84 (c), (f), (g) and (x), 1.96, 1.97, 1.107, 1.110,

1.131, 1.132, 1.154, 1.163, 1.291, 1.292, 1.315, 1.321 and 1.497, and

adds new Secs. 1.5(f), 1.75 (h) and (i), and 1.130, all of which are

based upon the changes proposed in the Notice of Proposed Rulemaking.

Implementation of 18-Month Publication Held in Abeyance Pending

Congressional Action on H.R. 1733

The Notice of Proposed Rulemaking also proposed changes to 37 CFR

1.4, 1.5(a), 1.9, 1.11, 1.12 (a) and (b), 1.13, 1.16, 1.17, 1.18, 1.19,

1.20, 1.24, 1.51, 1.52(d), 1.53, 1.55, 1.60, 1.78(a), 1.84(j), 1.85,

1.98, 1.108, 1.136, 1.138, 1.492, 1.494, 1.495, 1.701, 1.808, 3.31,

5.1, new Secs. 1.5(g), 1.306 through 1.308 and 5.9,

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and further changes to Secs. 1.14, 1.54, 1.62, 1.107, 1.131, 1.132,

1.291 and 1.292 to implement the 18-month publication of patent

applications as contained in H.R. 1733 and provide procedures for the

treatment of national security classified applications. The adoption of

changes to these rules is held in abeyance pending Congressional action

on H.R. 1733.

The proposed rule changes in the Notice of Proposed Rulemaking to

provide new procedures for the treatment of national security

classified applications are also being held in abeyance. These proposed

rule changes are separable from the implementation of 18-month

publication; however, they are sufficiently related to the

implementation of 18-month publication that they are also being held in

abeyance pending Congressional action on H.R. 1733.

In the event that H.R. 1733 is enacted, a final rule package to

implement this legislation will be published. Final rules to implement

18-month publication of patent applications based upon the Notice of

Proposed Rulemaking and the comments received in response to the Notice

of Proposed Rulemaking may be adopted without either an additional

public hearing or an additional proposal being published for comment.

Implementation of the Miscellaneous Changes Proposed in the Notice of

Proposed Rulemaking

The following paragraphs of this section include: (1) A discussion

of the rules being added or amended in this final rule package, (2) the

reasons for those additions and amendments, and (3) an analysis of the

comments received in response to the Notice of Proposed Rulemaking.

Changes to Proposed Rules

These final rules contain a number of changes to the text of the

rules as proposed for comment. The significant changes are discussed

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

Sections 1.14 (a) and (b) have been re-written for clarity. Section

1.14(a)(1) provides that patent applications are generally preserved in

confidence. Section 1.14(a)(2) sets forth the circumstances under which

status information concerning an application may be supplied, and

Sec. 1.14(a)(3) sets forth the circumstances under which access to, or

copies of, an application may be provided. Section 1.14(b) provides

that abandoned applications may be destroyed after 20 years from their

filing date. The reference to paragraph (b) in Sec. 1.14(e) has been

deleted for consistency with the changes to paragraphs (a) and (b) of

Sec. 1.14.

Section 1.52(a) is being changed to provide that all papers which

are to become a part of the permanent records of the Patent and

Trademark Office must be legibly ``written either by a typewriter or

mechanical printer in permanent dark ink or its equivalent,'' rather

than ``typed in permanent dark ink.'' This change will permit the

filing of papers printed by any computer operated printer, such as a

laser printer which uses toner rather than ink, and will avoid a

conflict between Sec. 1.52(a) and Patent Cooperation Treaty (PCT) Rule

11.9. The phrase ``when required by the Office'' was also added to

Sec. 1.52(a).

Section 1.52(b) is being changed to provide that: (1) The

application papers must be plainly written with each page printed on

only one side of a sheet of paper, with the claim or claims commencing

on a separate sheet and the abstract commencing on a separate sheet;

(2) the lines of the specification, and any amendments to the

specification, must be 1\1/2\ or double spaced; and (3) the pages of

the specification including claims and abstract must be numbered

consecutively, starting with 1, the numbers being centrally located

above or preferably, below, the text. This change will clarify: (1) The

separate sheet requirement for both the claims and abstract, (2) that

the lines of the papers not comprising the specification and amendments

thereto need not be 1\1/2\ or double spaced, and (3) that the

specification, and not the transmittal sheets or other forms, must be

numbered.

Section 1.58 is being changed to provide that chemical and

mathematical formulae and tables must be presented in compliance with

Secs. 1.52 (a) and (b), except that chemical and mathematical formulae

or tables may be placed in a landscape orientation if they cannot be

presented satisfactorily in a portrait orientation. This replaces the

requirement that ``[t]o facilitate camera copying when printing, the

width of formulas and tables as presented should be limited normally to

12.7 cm. (5 inches) so that it may appear as a single column in the

printed patent.'' However, chemical and mathematical formulae and

tables must still otherwise comply with Secs. 1.52 (a) and (b). This

change will avoid a conflict between Sec. 1.58 and PCT Rule 11.10(d).

Section 1.58 is also being changed to require ``0.21 cm.'' rather than

``2.1 mm.'' to ensure consistency.

Section 1.72 is being changed to provide that the abstract must

commence on a separate sheet, preferably following the claims. This

change will avoid renumbering pages of a specification submitted in the

arrangement set forth in Sec. 1.77 when filing the application as an

international application.

Section 1.75(h) is being changed to provide that the claim or

claims must commence on a separate sheet. This change will clarify that

Sec. 1.75 requires that the claim or claims commence or begin on a

separate sheet, rather than requiring that all of the claims must be on

a single separate sheet or that each claim must be on a separate sheet.

Section 1.77 is being changed to position the abstract as element

``(12)'' following the claims, rather than element ``(3)'' prior to the

first page of the specification to conform to Sec. 1.72.

Section 1.78(a)(2) is being changed to replace the reference to

Sec. 1.14(b) with a reference to Sec. 1.14(a).

Section 1.78(c) is being changed to replace the phrase ``[w]here an

application or a patent under reexamination and an application or a

patent'' with the phrase ``[w]here an application or a patent under

reexamination and at least one other application,'' since conflicting

claims between an application or a patent under reexamination and a

patent will be provided for in new Sec. 1.130. Section 1.78(c) is also

being changed to delete the sentence ``[i]n addition to making said

statement, the assignee may also explain why an interference should or

should not be declared,'' since the Office will not, unless good cause

is shown, declare or continue an interference when the application(s)

and patent are owned by a single party.

Section 1.78(d) is removed. The provisions of Sec. 1.78(d), as

proposed, are in new Sec. 1.130(b), since Sec. 1.130 provides for

conflicting claims between an application or a patent under

reexamination and a patent.

Section 1.84(x) is being changed from ``[n]o holes should be

provided in the drawings sheets'' to ``[n]o holes should be made by the

applicant in the drawing sheets'' to clarify that the application

papers, including drawings, should be submitted by the applicant

without holes provided therein, but that the Office will drill holes

through the application papers during the pre-examination processing of

the application.

Section 1.96(b) is being changed to provide that a listing

submitted as part of the specification ``must be direct printouts

(i.e., not copies) from the computer's printer'' for clarity.

Section 1.96(c) is being changed to substitute a reference to 36

CFR Part

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1230 (Micrographics) for the enumerated American National Standards

Institute (ANSI) and National Micrographics Association (NMA)

standards. As 36 CFR Part 1230 sets forth the micrographic requirements

for government records, it is appropriate to reference this provision,

rather than promulgate separate standards for micrographics employed in

patent applications.

Section 1.97 is being changed to delete any reference to a

reexamination proceeding or a patent owner. The submission of an

information disclosure statement during a reexamination proceeding is

governed by Sec. 1.555(a).

Section 1.97(a) is being changed from ``[i]n order for an applicant

for patent or for reissue of a patent to have information considered by

the Office during the pendency of a patent application, an information

disclosure statement in compliance with Sec. 1.98 should be filed in

accordance with this section'' to ``[i]n order for an applicant for a

patent or for a reissue of a patent to have an information disclosure

statement in compliance with Sec. 1.98 considered by the Office during

the pendency of the application, it must satisfy paragraph (b), (c), or

(d) of this section'' for clarity. Sections 1.97 (c) and (d) are also

being changed to clarify the conditions in Sec. 1.97(c) under which a

certification as specified in Sec. 1.97(e) or the fee set forth in

Sec. 1.17(p) is required, and the conditions in Sec. 1.97(d) under

which a certification as specified in Sec. 1.97(e), a petition, and the

petition fee set forth in Sec. 1.17(i) are required.

Section 1.110 is amended to change the reference to Sec. 1.78(d) to

a reference to Sec. 1.130 for consistency.

The proposed addition of a new Sec. 1.131(a)(3) is being withdrawn

in this final rule package. This proposed change, as well as the

provisions of former Sec. 1.78(d), has been re-written as a new

Sec. 1.130. New Sec. 1.130(a) will provide a procedure for the

disqualification of a commonly owned patent claiming a patentably

indistinct but not identical invention. New Sec. 1.130(b) will include

the provisions of former Sec. 1.78(d).

Section 1.131(a) is being changed to replace the phrase ``U.S.

patent to another'' with ``U.S. patent to another or others.''

Section 1.154(a)(7) is being changed to add ``[f]eature'' prior to

``[d]escription,'' and Sec. 1.154(a)(8) is being changed to add ``a

single'' prior to ``claim.''

Section 1.163 is being changed to position the abstract as element

``(11)'' following the claims, rather than element ``(3)'' prior to the

first page of the specification. This change will parallel the change

to Sec. 1.77. In addition, Sec. 1.163(c)(10) is being changed to add

``a single'' prior to ``claim.''

Section 1.497(b)(2) is being changed to provide that ``[i]f the

person making the oath or declaration is not the inventor, the oath or

declaration shall state the relationship of the person to the inventor,

the facts required by Secs. 1.42, 1.43 or 1.47, and, upon information

and belief, the facts which the inventor would have been required to

state'' to better set forth the requirements of an oath or declaration

by a person who is not the inventor. Section 1.497(c) is being changed

to delete the initial phrase ``[t]he oath or declaration must comply

with the requirements of Sec. 1.63; however,'' since it is unnecessary.

Discussion of Specific Rules

Title 37 of the Code of Federal Regulations, Part 1 is amended as

follows:

Section 1.5(f) is added to provide that a paper concerning a

provisional application must identify the application as such and by

the application number.

Section 1.12 is amended to revise paragraph (c) to read ``preserved

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

Section 1.14 is amended to revise the title and paragraphs (a) and

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

language in 35 U.S.C. 122.

Section 1.14(a) is amended to add a paragraph (a)(1) to provide

that patent applications are generally preserved in confidence pursuant

to 35 U.S.C. 122, and that no information will be given concerning the

filing, pendency, or subject matter of any application for patent, and

no access will be given to, or copies furnished of, any application or

papers relating thereto, except as set forth in Sec. 1.14.

Section 1.14(a) is also amended to add a paragraph (a)(2) to

provide that status may be supplied: (1) Concerning an application or

any application claiming the benefit of the filing date of the

application, if the application has been identified by application

number or serial number and filing date in a published patent document;

(2) concerning the national stage application or any application

claiming the benefit of the filing date of a published international

application, if the United States of America has been indicated as a

Designated State in the international application; or (3) when it has

been determined by the Commissioner to be necessary for the proper

conduct of business before the Office. Status information includes

information such as whether the application is pending, abandoned, or

patented, as well as the application number and filing date. The

inclusion of applications claiming the benefit of the filing date of

applications so identified is to avoid misleading the public in

instances in which the application identified as set forth in

Sec. 1.14(a)(2) is abandoned, but an application claiming the benefit

of the filing date of the identified application (e.g., a continuing

application) is pending.

Section 1.14(a) is also amended to add a new paragraph (a)(3) to

provide that access to, or copies of, an application may be provided:

(1) When the application is open to the public as provided in

Sec. 1.11(b); (2) when written authority in that application from the

applicant, the assignee of the application, or the attorney or agent of

record has been granted; (3) when it has been determined by the

Commissioner to be necessary for the proper conduct of business before

the Office, or (4) to any person on written request, without notice to

the applicant, when the application is abandoned and available and is:

(a) Referred to in a U.S. patent, (b) referred to in an application

open to public inspection, (c) an application which claims the benefit

of the filing date of an application open to public inspection, or (d)

an application in which the applicant has filed an authorization to lay

open the complete application to the public.

Section 1.14(b) is amended to provide that complete applications

(Sec. 1.51(a)) which are abandoned may be destroyed and hence may not

be available for access or copies as permitted by paragraph (a)(3)(iv)

of this section after 20 years from their filing date, except those to

which particular attention has been called and which have been marked

for preservation. The sentence in Sec. 1.14(b) concerning the non-

return of abandoned applications is deleted as duplicative of the

provision in Sec. 1.59, which provides that papers in an application

which has received a filing date will not be returned, and is unrelated

to the preservation of applications in confidence under Sec. 1.14.

Section 1.52(a) is amended to provide that all papers which are to

become a part of the permanent records of the Office must be legibly

written by a typewriter or mechanical printer in permanent dark ink or

its equivalent in portrait orientation on flexible, strong, smooth,

non-shiny, durable and white paper. Section 1.52(a) is further amended

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

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having sufficient clarity and contrast between the paper and the

writing thereon to permit electronic reproduction by use of digital

imaging and optical character recognition, as well as the direct

photocopy reproduction currently provided for. Section 1.52(a) is

further amended to provide that substitute typewritten or mechanically

printed papers ``will'' be required if the original application papers

are not of the required quality. As any substitute typewritten or

mechanically printed papers containing the subject matter of the

originally filed application papers would constitute a substitute

specification, the provisions of Sec. 1.125 governing the entry of a

substitute specification would be applicable, and Sec. 1.52(a) is

amended to include a specific reference to Sec. 1.125.

Section 1.52(b) is amended to provide that the claim or claims must

commence on a separate sheet and the abstract must commence on a

separate sheet. Section 1.72(b) provides that the abstract must

commence on a separate sheet, and Sec. 1.75(h) provides that the claim

or claims must commence on a separate sheet. Section 1.52(b) is amended

to provide that the sheets of paper must all be the same size and

either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8\1/

2\ by 11 inches), with a top margin of at least 2.0 cm. (\3/4\ inch), a

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

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

(\3/4\ inch), and that no holes should be made in the submitted paper

sheets. Section 1.52(b) is further amended to provide that the lines of

the specification, and any amendments to the specification, ``must'' be

1\1/2\ or double spaced, and that the pages of the specification

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

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

Sec. 1.52(b) is amended to specifically reference drawings to clarify

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

standards for drawings are set forth in Sec. 1.84.

The proposed changes to Secs. 1.52 (a) and (b), 1.58, 1.72(b), 1.75

(g), (h), and (i), 1.77, 1.84 (c), (f), (g), and (x), 1.96, 1.154, and

1.163 pertaining to the format and standards for application papers and

drawings in the Notice of Proposed Rulemaking are considered desirable,

regardless of whether H.R. 1733 is enacted.

While the vast majority of applications currently comply with

Secs. 1.52 (a) and (b), 1.58, 1.72(b), 1.75(h), 1.84 (c), (f), (g), and

(x), and 1.96 as adopted in this final rule, those applications which

do not comply with Secs. 1.52 (a) and (b), 1.58, 1.84 (c), (f), (g),

and (x), and 1.96 as adopted in this final rule (e.g., applications

containing hand-written papers) create an inordinate administrative

burden on the Office during the initial processing, examination, and

publishing of the application as a patent. In addition, the Office

plans to replace or augment the current microfilming process with

electronic data capture of at least the technical content (i.e., the

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

filed for internal Office use, regardless of whether H.R. 1733 is

enacted. Therefore, the Office will no longer permit these relatively

few applicants to submit application papers and drawings that do not

meet the standards set forth in Secs. 1.52 (a) and (b), 1.58, 1.84 (c),

(f), (g), and (x), and 1.96 as adopted in this final rule.

The application format set forth in Secs. 1.75 (g) and (i), 1.77,

1.154, and 1.163 as adopted in this final rule merely expresses the

Office's preferences for format of utility, design and plant

applications. They do not set forth mandatory requirements for

application papers and drawings.

Section 1.54(b) is amended to change ``application serial number''

to ``application number'' for consistency with Sec. 1.5(a).

Section 1.58(b) is removed and is reserved as unnecessary in view

of the amendments to Secs. 1.52 (a) and (b).

Section 1.58(c) is amended to provide that chemical and

mathematical formulae and tables must be presented in compliance with

Secs. 1.52 (a) and (b), except that chemical and mathematical formulae

or tables may be placed in a landscape orientation if they cannot be

presented satisfactorily in a portrait orientation. Section 1.58(c) is

further amended to delete the following sentences to conform to the

writing and paper size and orientation limitations in Secs. 1.52 (a)

and (b): (1) ``[t]o facilitate camera copying when printing, the width

of formulas and tables as presented should be limited normally to 12.7

cm. (5 inches) so that it may appear as a single column in the printed

patent''; (2) ``[i]f it is not possible to limit the width of a formula

or table to 5 inches (12.7 cm.), it is permissible to present the

formula or table with a maximum width of 10\3/4\ inches (27.3 cm.) and

to place it sideways on the sheet''; and (3) ``[h]and lettering must be

neat, clean, and have a minimum character height of 0.08 inch (2.1

mm.).'' Section 1.58(c) is further amended to insert ``chosen'' between

``must be'' and ``from a block (nonscript) type font.'' Section 1.58(c)

is further amended to provide metric dimensions with English

equivalents in parentheticals, rather than vice versa.

Section 1.62(e) is amended to change ``application serial number''

to ``application number'' for consistency with Sec. 1.5(a).

Section 1.62(f) is amended to change ``secrecy'' to ``confidence''

as is found in 35 U.S.C. 122 and Sec. 1.14, and change ``37 CFR 1.14''

to ``Sec. 1.14'' for consistency.

Section 1.72(b) is amended to provide that the abstract must

``commence,'' rather than ``be set forth,'' on a separate sheet. This

change will conform the ``separate sheet'' requirement for the abstract

with that for the claims.

Section 1.75 is amended to include an amendment to paragraph (g),

and would add two new paragraphs. Section 1.75(g) is amended to add the

phrase ``[t]he least restrictive claim should be presented as claim

number 1'' to the beginning of the paragraph. Section 1.75(h) is added

to provide that the claim or claims must commence on a separate sheet.

Section 1.75(i) is added to provide that where a claim sets forth a

plurality of elements or steps, each element or step of the claim

should be separated by a line indentation.

Section 1.77 is amended to provide that the elements of the

application, if applicable, should appear in the following order: (1)

Utility Application Transmittal Form; (2) Fee Transmittal Form; (3)

title of the invention; or an introductory portion stating the name,

citizenship, and residence of the applicant, and the title of the

invention; (4) cross-reference to related applications; (5) statement

regarding federally sponsored research or development; (6) reference to

a ``Microfiche appendix; (7) background of the invention; (8) brief

summary of the invention; (9) brief description of the several views of

the drawing; (10) detailed description of the invention; (11) claim or

claims; (12) abstract of the disclosure; (13) drawings; (14) executed

oath or declaration; and (15) sequence listing.

The phrase ``if applicable'' is inserted in the heading, rather

than associated with any particular listed element, to clarify that

Sec. 1.77 does not per se require that an application include all of

the listed elements, but merely provides that any listed element

included in the application should appear in the order set forth in

Sec. 1.77. Section 1.77 is further amended to provide that the (1)

title of the invention; (2) cross-reference to related applications;

(3) statement regarding federally sponsored research or development;

(4) background of the invention; (5) brief summary of the

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invention; (6) brief description of the several views of the drawing;

(7) detailed description of the invention; (8) claim or claims; (9)

abstract of the disclosure; and (10) sequence listing, should appear in

upper case, without underlining or bold type, as section headings, and

if no text follows the section heading, the phrase ``Not Applicable''

should follow the section heading. Finally, Sec. 1.77 is amended to

change the reference to Sec. 1.96(b) in Sec. 1.77(a)(6) to Sec. 1.96(c)

for consistency with Sec. 1.96.

Section 1.78(a)(2) is amended to replace the reference to

Sec. 1.14(b) with a reference to Sec. 1.14(a) for consistency with

Secs. 1.14 (a) and (b) as amended.

Section 1.78(c) is amended to change ``two or more applications, or

an application and a patent'' to ``an application or a patent under

reexamination and at least one other application'' such that the

provisions of Sec. 1.78(c) will also be applicable to a patent under

reexamination. Section 1.78(c) is also amended to correct ``inventors

and owned by the same party contain conflicting claims'' to read

``inventors are owned by the same party and contain conflicting

claims.'' Section 1.78(c) is also amended to delete the sentence ``[i]n

addition to making said statement, the assignee may also explain why an

interference should or should not be declared.''

Section 1.78(d) is removed. The provisions of former Sec. 1.78(d),

as proposed, are in new Sec. 1.130(b).

Section 1.84(c) is amended to provide that a reference to the

application number, or, if an application number has not been assigned,

the inventor's name, may be included in the left-hand corner of the

drawing sheet, provided that reference appears within 1.5 cm. (\9/16\

inch) from the top of the sheet.

Section 1.84(f) is amended to provide that the size of all drawing

sheets in an application must be either 21.0 cm. by 29.7 cm. (DIN size

A4) or 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches) to conform to the

requirement in Sec. 1.52(b) concerning papers in an application.

Section 1.84(g) is amended to delete the margin requirements for

the sheet sizes that are no longer acceptable in view of the changes to

Sec. 1.84(f). Section 1.84(g) is further amended to provide that the

sheets should have scan targets (cross-hairs) on two catercorner margin

corners. Finally, Sec. 1.84(g) is amended to increase the bottom and

side margins such that each sheet must include a top margin of at least

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

right side margin of at least 1.5 cm. (\9/16\ inch), and a bottom

margin of at least 1.0 cm. (\3/8\ inch), thereby leaving a sight no

greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size A4)

drawing sheets, and a sight no greater than 17.6 cm. by 24.4 cm. (6\15/

16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inch)

drawing sheets.

Section 1.84(x) is amended to delete the provisions indicating the

proper location for holes in a drawing sheet, and provide that no holes

should be provided in the drawing sheets.

Section 1.96 is amended to designate the text preceding current

paragraph (a) as paragraph (a) ``General,'' and would redesignate

current paragraphs (a) and (b) as paragraphs (b) and (c), respectively.

New Sec. 1.96(a) is further amended to insert a period between

``specification'' and ``[a] computer,'' to change ``these rules'' to

``this section,'' and to change ``may be submitted in patent

applications in the following forms'' to ``may be submitted in patent

applications as set forth in paragraphs (b) and (c) of this section.''

New Sec. 1.96(b) is further amended to: (1) Change the sentences

``[t]he listing may be submitted as part of the specification in the

form of computer printout sheets (commonly 14 by 11 inches in size) for

use as `camera ready copy' when a patent is subsequently printed'' and

``[s]uch computer printout sheets must be original copies from the

computer with dark solid black letters not less than 0.21 cm. high, on

white, unshaded and unlined paper, the printing on each sheet must be

limited to an area 9 inches high by 13 inches wide, and the sheets

should be submitted in a protective cover'' to ``[a]ny listing

submitted as part of the specification must be direct printouts (i.e.,

not copies) from the computer's printer with dark solid black letters

not less than 0.21 cm. high, on white, unshaded and unlined paper, and

the sheets should be submitted in a protective cover''; (2) delete the

sentence ``[w]hen printed in patents, such computer printout sheets

will appear at the end of the description but before the claims and

will usually be reduced about 1/2 in size with two printout sheets

being printed as one patent specification page''; and (3) delete the

phrase ``if the copy is to be used for camera ready copy.'' New

Sec. 1.96(b)(1) provides that the requirements of Sec. 1.84 apply to

computer program listings submitted as sheets of drawings, and new

Sec. 1.96(b)(2) provides that the requirements of Sec. 1.52 apply to

computer program listings submitted as part of the specification.

New Sec. 1.96(c) is amended to: (1) Change the references to

Sec. 1.77(c)(2) in Sec. 1.96(c) to Sec. 1.77(a)(6) for consistency with

Sec. 1.77; (2) change ``may'' and ``should'' to ``must''; (3) delete

the sentence ``[a]ll computer program listings submitted on paper will

be printed as part of the patent''; (4) relocate the phrase ``except as

modified or clarified below'' in subsection (c)(2); (5) change the

phrase ``computer-generated information submitted as an appendix to an

application for patent shall be in the form of microfiche in accordance

with the standards'' to ``computer-generated information submitted as a

`microfiche appendix' to an application shall be in accordance with the

standards'' for clarity; (6) change the references to the specific

American National Standards Institute (ANSI) or National Micrographics

Association (NMA) standards with 36 CFR Part 1230; (7) change ``serial

number'' to ``application number''; and (8) provide metric dimensions

with English equivalents in parentheticals, rather than vice versa.

Section 1.97(a) is amended to include the phrase ``for an applicant

for patent or for reissue of a patent.'' Paragraphs (a)-(d) are amended

to include the phrase ``by the applicant'' to clarify that Sec. 1.97 is

not available for any third party seeking to have information

considered in a pending application. Any third party seeking to have

information considered in a pending application must proceed under

Secs. 1.291 or 1.292. As discussed supra, Secs. 1.97 (a), (c) and (d)

are also being amended for clarity. Section 1.97(c) is further amended

to correct the phrase ``certification as specified in paragraph (3) of

this section'' to read ``certification as specified in paragraph (e) of

this section.''

Section 1.107 is amended to delete the phrase ``and the classes of

inventions.''

Section 1.110 is amended to change the reference to Sec. 1.78(d) to

a reference to Sec. 1.130 for consistency with the removal of

Sec. 1.78(d), and the location of the provisions of former Sec. 1.78(d)

in Sec. 1.130(b).

A new paragraph (a)(3) in Sec. 1.131 was proposed in the Notice of

Proposed Rulemaking to permit a showing of prior invention in a pending

application or patent under reexamination to avoid a rejection under 35

U.S.C. 103 based upon a patent which qualifies as prior art only under

35 U.S.C. 102 (a) or (e), where the application or patent under

reexamination and the patent upon which the rejection is based are both

owned by a single party, so long as the invention claimed in the

pending application or patent under reexamination and in the other

patent are not identical as set forth in 35 U.S.C. 102. Upon further

study, it is considered

[[Page 42795]]

appropriate to disqualify such patents, and provide for the obviation

of judicially created double patenting rejections in an application or

a patent under reexamination by the filing of a terminal disclaimer in

accordance with Sec. 1.321(c), in a separate Sec. 1.130.

New Sec. 1.130(a) provides that when any claim of an application or

a patent under reexamination is rejected under 35 U.S.C. 103 on a U.S.

patent to another or others which is not prior art under 35 U.S.C.

102(b), and the inventions defined by the claims in the application or

patent under reexamination and by the claims in the patent are

patentably indistinct but not identical as set forth in 35 U.S.C. 101,

and the inventions are owned by the same party, the applicant or owner

of the patent under reexamination may disqualify the patent as prior

art. Section 1.130(a) specifically provides that the patent can be

disqualified as prior art by submission of: (1) A terminal disclaimer

in accordance with Sec. 1.321(c), and (2) an oath or declaration

stating that the application or patent under reexamination and the

patent are currently owned by the same party, and that the inventor

named in the application or patent under reexamination is the prior

inventor under 35 U.S.C. 104.

Where inventions defined by the rejected claims in the application

or a patent under reexamination and by the claims in the patent upon

which the rejection is based are patentably distinct, the rejection may

be overcome pursuant to Sec. 1.131. Since Sec. 1.130 applies only when

inventions defined by the claims in an application or a patent under

reexamination and by the claims in the patent are patentably

indistinct, Sec. 1.130 expressly provides that an oath or declaration

submitted pursuant to Sec. 1.130 to disqualify a patent must be

accompanied by a terminal disclaimer in accordance with Sec. 1.321(c).

As the conflict between two pending applications can be avoided by

filing a continuation-in-part application merging the conflicting

inventions into a single application, Sec. 1.130 is limited to

rejections based upon a patent.

New Sec. 1.130(b) includes the provisions of former Sec. 1.78(d),

as proposed in the Notice of Proposed Rulemaking. Former Sec. 1.78(d)

was proposed to be amended to change ``obviousness-type double

patenting rejection'' to ``non-statutory double patenting rejections''

as current examining procedures authorize non-obviousness-type double

patenting rejections, as well as obviousness-type double patenting

rejections (See section 804(II) of the Manual of Patent Examining

Procedure (MPEP)), and either may be obviated by filing a terminal

disclaimer in accordance with Sec. 1.321(c). The phrase ``non-statutory

double patenting rejection,'' however, is being replaced with

``judicially created double patenting rejection'' to better set forth

the legal basis for the rejection.

Section 1.78(d) was also proposed to be amended to change each

instance of ``application'' to ``application or a patent under

reexamination'' for consistency with Sec. 1.321 and to clarify that

double patenting is a proper consideration in reexamination (Ex parte

Obiaya, 227 USPQ 58, 60-61 (Bd. Pat. App. & Inter. 1985)), and that a

judicially created double patenting rejection in a patent under

reexamination may be obviated by filing a terminal disclaimer in

accordance with Sec. 1.321(c).

New Sec. 1.130(b) specifically provides that where an application

or a patent under reexamination claims an invention which is not

patentably distinct from an invention claimed in a commonly owned

patent with the same or a different inventive entity, a double

patenting rejection will be made in the application or a patent under

reexamination, and that a judicially created double patenting rejection

may be obviated by filing a terminal disclaimer in accordance with

Sec. 1.321(c).

Section 1.131 is amended to change ``U.S. patent to another'' to

``U.S. patent to another or others'' to parallel the language in 35

U.S.C. 102(a), as well as 35 U.S.C. 102(e).

Section 1.132 is amended to change ``domestic patent'' to ``U.S.

patent,'' and ``does not claim the invention'' to ``does not claim the

same patentable invention, as defined in Sec. 1.601(n)'' for

consistency with Sec. 1.131.

Section 1.154 is amended to provide that the elements of a design

application, if applicable, should appear in the following order: (1)

Design Application Transmittal Form; (2) Fee Transmittal Form; (3)

preamble, stating name of the applicant and title of the design; (4)

cross-reference to related applications; (5) statement regarding

federally sponsored research or development; (6) description of the

figure or figures of the drawing; (7) feature description; (8) a single

claim; (9) drawings or photographs; and (10) executed oath or

declaration. The phrase ``[t]he following order of arrangement should

be observed in framing design specifications'' is changed to ``[t]he

elements of the design application, if applicable, should appear in the

following order'' to clarify that Sec. 1.154 does not per se require

that an application include all of the listed elements, but merely

provides that any listed element included in the application should

appear in the order set forth in Sec. 1.154. This amendment to

Sec. 1.154, however, does not modify the current requirement that an

application for a design patent have but a single claim.

A new Sec. 1.163(c) is added to provide that the elements of a

plant application, if applicable, should appear in the following order:

(1) Plant Application Transmittal Form; (2) Fee Transmittal Form; (3)

title of the invention; (4) cross-reference to related applications;

(5) statement regarding federally sponsored research or development;

(6) background of the invention; (7) brief summary of the invention;

(8) brief description of the drawing; (9) detailed botanical

description; (10) a single claim; (11) abstract of the disclosure; (12)

drawings (in duplicate); (13) executed oath or declaration; and (14)

Plant Color Coding Sheet. The phrase ``if applicable'' is included in

the heading, rather than associated with any particular listed element,

to clarify that Sec. 1.163 does not per se require that an application

include all of the listed elements, but merely provides that any listed

element included in the application should appear in the order set

forth in Sec. 1.163. This amendment to Sec. 1.163, however, does not

modify the current requirement that an application for a plant patent

have but a single claim.

A new Sec. 1.163(d) is added to define a plant color coding sheet.

A plant color coding sheet is a sheet that specifies a color coding

system as designated in a color dictionary, and lists every plant

structure to which color is a distinguishing feature and the

corresponding color code which best represents that plant structure.

The plant color coding sheet will provide a means for applicants to

uniformly convey detailed color characteristics of the plant. Providing

this information in a systematic manner will facilitate the examination

of the application.

Section 1.291 is amended to provide that a protest must be filed

prior to the mailing of a Notice of Allowance to be considered timely.

As a protest cannot be considered subsequent to issuance of the

application as a patent, Sec. 1.291(b) is amended to provide that the

protest will be considered if the application is still pending when the

protest and application file are provided to the examiner (i.e., that

the application was pending at the time the protest was filed would be

immaterial to its ultimate consideration). Finally, the sentences

[[Page 42796]]

``[p]rotests raising fraud or other inequitable conduct issues will be

entered in the application file, generally without comment on those

issues'' and ``[p]rotests which do not adequately identify a pending

patent application will be disposed of and will not be considered by

the Office'' in Sec. 1.291 are changed to ``[p]rotests raising fraud or

other inequitable conduct issues will be entered in the application

file, generally without comment on those issues'' and ``[p]rotests

which do not adequately identify a pending patent application will be

returned to the protestor and will not be further considered by the

Office,'' respectively, and are located in paragraph (b). The Office

will acknowledge protests prior to their entry into the application

file or return to the protestor, as appropriate.

Section 1.292 is amended to delete the phrase ``is filed by one

having information of the pendency of an application'' as unnecessary,

and would move the requirement for the fee set forth in Sec. 1.17(j)

from paragraph (a) to paragraph (b) where the conditions for entry of a

petition for the institution of public use proceedings are set forth.

Section 1.292 is amended to further require that any petition be served

on the applicant in accordance with Sec. 1.248, or be filed with the

Office in duplicate in the event that service on the applicant is not

possible. Finally, Sec. 1.292 is amended to provide that a petition to

institute public use proceedings to be considered timely must be filed

prior to the mailing of a Notice of Allowance.

Section 1.315 is amended to change ``the attorney or agent of

record, if there be one; or if the attorney or agent so request, to the

patentee or assignee of an interest therein; or, if there be no

attorney or agent, to the patentee or to the assignee of the entire

interest, if he so request'' to ``the correspondence address of record.

See Sec. 1.33(a).'' This change is to simplify Sec. 1.315, and because

patents are currently mailed to the patentee at the correspondence

address of record.

Section 1.321(c) is amended to change ``double patenting

rejection'' to ``judicially created double patenting rejection'' for

consistency with Sec. 1.78(c) and to clarify that the filing of a

terminal disclaimer is ineffective to overcome a statutory double

patenting rejection.

Section 1.497(a) is amended to provide that an applicant in an

international application must file an oath or declaration that: (1) Is

executed in accordance with either Secs. 1.66 or 1.68, (2) identifies

the specification to which it is directed, (3) identifies each inventor

and the country of citizenship of each inventor, and (4) states that

the person making the oath or declaration believes the named inventor

or inventors to be the original and first inventor or inventors of the

subject matter which is claimed and for which a patent is sought,

rather than an oath or declaration in accordance with Sec. 1.63, to

enter the national stage pursuant to Secs. 1.494 or 1.495. Currently,

the failure to file an oath or declaration in strict compliance with

Sec. 1.63 results in non-compliance with Sec. 1.497, and thus 35 U.S.C.

371, which in turn delays the entry of the international application

into the national stage. To expedite the entry of international

applications into the national stage, Sec. 1.497(a) is amended to

require only an oath or declaration that is properly executed,

identifies the specification to which it is directed, and, as required

by 35 U.S.C. 115, identifies each inventor and the country of

citizenship of each inventor and states that the person making the oath

or declaration believes the named inventor or inventors to be the

original and first inventor or inventors of the subject matter which is

claimed and for which a patent is sought.

Section 1.497(b) is subdivided into paragraphs (b)(1) and (b)(2).

Section 1.497(b)(1) is amended to provide that the oath or declaration

must be made by all of the actual inventors except as provided for in

Secs. 1.42, 1.43 or 1.47. Section 1.497(b)(2) is amended to change

``[i]f the international application was made as provided in

Secs. 1.422, 1.423 or 1.425, the applicant shall state his or her

relationship to the inventor and, upon information and belief, the

facts which the inventor is required by Sec. 1.63 to state'' to ``[i]f

the person making the oath or declaration is not the inventor, the oath

or declaration shall state the relationship of the person to the

inventor, the facts required by Secs. 1.42, 1.43 or 1.47, and, upon

information and belief, the facts which the inventor would have been

required to state.''

Section 1.497(c) is added to provide that the oath or declaration

must comply with the requirements of Sec. 1.63. Section 1.497(c)

further provides that in instances where the oath or declaration does

not comply with Sec. 1.63, but meets the requirements of Sec. 1.497 (a)

and (b), the oath or declaration will be accepted as complying with 35

U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c), thus permitting the

application to enter the national stage and the assignment of dates

under 35 U.S.C. 102(e) and 371(c). A supplemental oath or declaration

in compliance with Sec. 1.63, however, will be required in accordance

with Sec. 1.67.

Response to Comments

Two hundred and forty-two written comments were received in

response to the Notice of Proposed Rulemaking. A public hearing was

held on September 19, 1995. Eight persons testified at the public

hearing.

The written comments, and the testimony at the public hearing, have

been analyzed. In the event that H.R. 1733 is enacted, the comments

directed to the proposed changes to the rules of practice to implement

the 18-month publication of patent applications will be considered and

addressed in the final rule package to implement 18-month publication.

Responses to the comments germane to the changes in this final rule

package follow.

Comment (1): One comment suggested that, in the absence of an 18-

month publication system, the proposed rules relating to application

format and standardization of applications be republished to give the

public an opportunity to comment on the desirability of these changes

in the absence of an 18-month publication system.

Response: The Notice of Proposed Rulemaking specifically stated

that the proposed rules relating to application format and

standardization of applications may be adopted as final rules even in

the absence of an 18-month publication system, and specifically advised

interested members of the public to comment on the advisability of the

proposed rules relating to application format and standardization of

applications, regardless of the legislative action on H.R. 1733. Thus,

the public was given an opportunity to comment on the desirability of

these changes in the absence of an 18-month publication system. Because

the standardization of applications is generally favored and will

substantially improve the Office's ability to efficiently and

effectively process applications, delaying their adoption as final

rules is not justified.

Comment (2): One comment stated that the Office has the authority

to require that applications be submitted in computer-readable form,

and in fact requires sequence listings to be submitted in such form.

The comment suggested that the cost of electronically scanning

application papers, as well as errors in scanning the application

papers, can be avoided by requiring applicants to provide the

specification in computer-readable form. Another comment stated that

the Office has the authority to permit electronic filing, and

electronic filing should be permitted. Several other comments indicated

that

[[Page 42797]]

scanning an application into a data base, rather than permitting

applicants to provide a copy of the application on an electronic

medium, is more costly, and is further more likely to introduce errors

that could render text searching unreliable. And, several comments

suggested that the scanning and typesetting costs associated with the

current publication process for issued patents could be reduced by the

acceptance of electronic media in place of or in addition to the paper

medium currently provided for in the rules of practice. These comments

further suggested that the Office should establish fees that reflect

the reduced cost to the Office when a copy of an application is

provided on an electronic medium (i.e., should establish reduced fees

for those who submit a copy of their application on an electronic

medium), which fee structure would provide an incentive to supply a

copy of an application on an electronic medium.

Response: As discussed in the Notice of Proposed Rulemaking, while

the Office is considering the legislative and regulatory changes that

would be necessary to permit purely electronic filing of application

papers, it does not currently have in place an automated system for the

acceptance and processing of application papers in electronic form,

other than for sequence listings. Moreover, the Office does not

currently have the statutory authority to rebate statutory patent

filing fees to reflect any reduced cost to the Office due to the

submission of a copy of an application on an electronic medium. The

Office will give the comments further consideration as it designs and

develops the Patent Application Management (PAM) system.

Comment (3): Several comments noted that Secs. 1.52 (a) and (b)

impose a standard on applicants not currently observed by the Office,

and questioned whether papers in the application file prepared by the

Office will comply with Secs. 1.52 (a) and (b).

Response: Sections 1.52 (a) and (b) apply to the application

papers, and amendments or corrections thereto. As such, Secs. 1.52 (a)

and (b) do not apply to those papers in the application file prepared

by the Office, since they do not become part of the printed patent.

Comment (4): One comment noted that proposed Sec. 1.52 appears to

be neutral with regard to numbering the lines (e.g., a line number

every five lines) of the specification, and suggested that line

numbering is a beneficial practice which should be permitted, and even

encouraged.

Response: Section 1.52 neither requires nor prohibits line

numbering. Applicants are encouraged, but not required, to number the

lines of the specification. The Office will give the suggestion further

study and consideration in future rulemaking.

Comment (5): One comment noted that when paragraphs are separated

by a blank line only (i.e., no indentation) and end between pages, it

is not possible to tell that a paragraph break occurred. The comment

suggested that the application format requirements should additionally

require an indentation at the beginning of each new paragraph.

Response: It is desirable that a specification include an

indentation at the beginning of a new paragraph. This requirement,

however, was not proposed for comment in the Notice of Proposed

Rulemaking. In addition, PCT Rule 11 does not require that the

beginning of each new paragraph in the specification be indented.

Comment (6): One comment noted that Sec. 1.52(a) would prohibit

handwriting or hand-printing on papers which are to become permanent

Office records. The comment questioned whether this requirement would

also apply to papers issued in the Office. The comment suggested

revising Office practice to prohibit an examiner from handwriting

comments on official papers (e.g., advisory actions or interview

summary records) because: (1) The handwriting is not always

decipherable, and (2) the handwriting as it comes through on the carbon

copies furnished to applicants is frequently too light at least in part

to be decipherable.

Response: The Office's goal is to create a readable administrative

record of the prosecution of every application. The Office is currently

designing, testing and implementing electronic forms and Office action

writing software to avoid or minimize the need for hand-writing/

printing in Office communications. Any applicant receiving an Office

communication in which the handwriting is not decipherable, or does not

adequately appear on the carbon copies to be decipherable, should

request a legible copy of such communication from the Office.

Comment (7): Several comments noted that the limitations in

Sec. 1.52 (a) and (b) regarding ``typed'' and ``ink'' appear to exclude

computer and laser printers, as well as commercially or mechanically

printed papers such as declaration forms. Another comment noted that

the limitations in Secs. 1.52 (a) and (b) regarding ``typed'' and

``ink'' are more restrictive than PCT Rule 11.9 (a) and (d).

Response: The phrase ``printed'' was proposed to be deleted since

it could be read to mean that hand-printing is acceptable. Section

1.52(a) will require, in part, that ``[a]ll papers which are to become

a part of the permanent records of the Patent and Trademark Office must

be legibly written either by a typewriter or mechanical printer in

permanent dark ink or its equivalent in portrait orientation on

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

will clarify that papers printed by a computer-operated laser, or any

mechanical printer are acceptable, but that hand-printed papers are

not. This change will also avoid inconsistencies with the requirements

of PCT Rule 11.9.

Comment (8): One comment noted that the proposed changes to

Sec. 1.52(a) did not include any limitations regarding permissible type

fonts. The comment questioned, since the purpose of the proposed rule

change was to permit optical character recognition (OCR) scanning of

the application papers, whether script fonts would be permissible.

Response: Section 1.52(a) does not include any express prohibition

against the use of script fonts. Nevertheless, Sec. 1.52(a) requires

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

sufficient clarity and contrast between the paper and the writing

thereon to permit * * * electronic reproduction by use of digital

imaging and optical character recognition.'' Any application papers,

including application papers containing a script font, that are not in

a form having sufficient clarity and contrast between the paper and the

writing thereon to permit electronic reproduction by use of digital

imaging and optical character recognition will be objected to as not in

compliance with Sec. 1.52(a). Therefore, the Office cautions applicants

not to submit application papers having script fonts.

Comment (9): One comment noted that Sec. 1.52(b) would require that

all papers (including drawings per proposed Sec. 1.84) be limited to

either DIN size A4 or 8\1/2\ by 11 inches, which would eliminate the

currently allowed paper sizes of 8\1/2\ by 13 or 14 inches. The comment

questioned whether this would also apply to the official papers issued

by the Office, noting that the Office currently issues papers having a

paper size mix of 8\1/2\ by 11, 13, and 14 inches, which presents

problems for applicants. The comment suggested that the Office should

not issue papers of a size not permitted in Sec. 1.52.

Response: The Office is currently in the process of standardizing

to either

[[Page 42798]]

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

11 inches).

Comment (10): One comment suggested that the Office should not

issue papers with writing on the back side in accordance with

Sec. 1.52(b).

Response: The Office currently includes informational language on

the back side of certain forms. The alternatives to issuing such forms

with writing on the back side are: (1) Not providing this information

to applicants, (2) reducing the print size to permit all of the

information to be located on the front of the form, or (3) routinely

providing multiple page forms. Since none of the alternatives are

preferable to simply including informational language on the back side

of certain forms, the Office will continue to include information

language on the back of papers issued by the Office, until it fully

transforms all of its forms to electronically generated forms.

Comment (11): One comment questioned whether the phrase ``claims on

a separate sheet'' in Sec. 1.52(b) means that: (1) All of the claims

must appear on a single separate sheet, (2) each claim must appear on a

separate sheet, or (3) the claims (claim 1) must begin or commence on a

separate sheet. The comment suggested the PCT wording that the claims

shall commence on a separate sheet if the rule is intended to require

that the claims (claim 1) must begin or commence on a separate sheet.

Response: The phrase has been changed to ``the claim or claims

commencing on a separate sheet'' to clarify that the claims must begin

or commence on a separate sheet to parallel PCT requirements. Thus,

Secs. 1.52(b) and 1.75(h) require that the claims (claim 1) must begin

or commence on a separate sheet. Sections 1.52(b) and 1.75(h) do not

require that all of the claims be set forth on a single sheet, or that

each claim be set forth on a separate sheet.

Comment (12): One comment questioned whether the phrase ``abstract

and claims on a separate sheet'' in Sec. 1.52(b) means that the

abstract is to be on one separate sheet, and the claims are to be (or

commence) on another separate sheet.

Response: The phrase has been changed to ``the claim or claims

commencing on a separate sheet and abstract commencing on a separate

sheet'' to clarify that the claims must commence on one separate sheet

and the abstract must commence on another separate sheet.

Comment (13): One comment noted that the requirement in

Sec. 1.52(b), as proposed, will require that the lines in the oath or

declaration, as well as quotations from the rules, the MPEP, and court

decisions in subsequently filed amendments, be 1\1/2\ or double spaced,

and is inconsistent with the forms included for comment with the Notice

of Proposed Rulemaking.

Response: Section 1.52(b) has been changed to require, inter alia,

that ``[t]he lines of the specification, and any amendments to the

specification, must be 1\1/2\ or double spaced.'' The requirement for

1\1/2\ or double spacing will not apply to oaths or declarations, pre-

printed forms, or all of the statements in the ``Remarks'' section of

an amendment. Applicants are nevertheless requested to submit papers

with lines 1\1/2\ or double spaced, except in standardized forms or

where single-spacing may be stylistically necessary (e.g., block

quotations).

Comment (14): One comment questioned whether the requirement in

Sec. 1.52(b), as proposed, that papers have lines 1\1/2\ or double

spaced will apply to Office actions. The comment suggested that not

placing block quotations from the statutes and regulations in single

spacing will decrease the readability of Office actions.

Response: As discussed supra, Secs. 1.52 (a) and (b) are designed

to facilitate patent printing and do not apply to Office actions.

Section 1.52(b) has been changed to require, inter alia, that ``[t]he

lines of the specification, and any amendments to the specification,

must be 1\1/2\ or double spaced.'' Therefore, the requirement for 1\1/

2\ or double spaced lines will not apply to Office actions.

Comment (15): Several comments objected to the requirement that

tables be in portrait orientation as inconsistent with PCT rules, and

as causing tables to be split over multiple pages.

Response: The suggestions are adopted. Section 1.58 will state that

``[c]hemical and mathematical formulae and tables must be presented in

compliance with Secs. 1.52 (a) and (b), except that chemical and

mathematical formulae or tables may be placed in a landscape

orientation if they cannot be presented satisfactorily in a portrait

orientation,'' rather than ``[t]o facilitate camera copying when

printing, the width of formulae and tables as presented should be

limited normally to 12.7 cm. (5 inches) so that it may appear as a

single column in the printed patent.''

Comment (16): One comment stated that Sec. 1.72 is contrary to PCT

Rule 11.4(a), and will require renumbering of the application pages for

later filing of that application in the European Patent Office (EPO) or

under the PCT.

Response: Section 1.72, as proposed in the Notice of Proposed

Rulemaking, provided that the abstract be ``preferably prior to the

first page of the specification,'' and, as such, merely expressed the

Office's preference for the location of the abstract as prior to the

first page of the specification. Nevertheless, to avoid the undesirable

result of requiring an applicant who submitted an application in the

format set forth in Sec. 1.77 to renumber the specification pages for

filing that application in the EPO or under the PCT, Sec. 1.72 is

changed to state that the preferable location of the abstract is

following the claims.

Comment (17): One comment stated that requiring that the rarely

used section headings (e.g., statement regarding federally sponsored

research and development) be followed by the phrase ``not-applicable''

is confusing.

Response: Section 1.77 is permissive rather than mandatory. As

such, any applicant finding the format suggested therein to be

confusing is at liberty to simply include those section headings

applicable to the particular application. The use of each section

heading, even when the section is ``not-applicable,'' is desirable in

that it apprises the Office that the section at issue has been

considered and deemed inapplicable. Simply not providing a section

heading is ambiguous as to whether the applicant considers the section

inapplicable or has not considered whether the section is applicable to

the application. In addition, the use of such section headings will be

of greater benefit when the Office implements procedures to permit the

electronic filing of patent applications.

Comment (18): One comment stated that the requirements set forth in

Sec. 1.77 are in addition to those required by the PCT. The comment

argued that the Office cannot require international applications

entering the national stage under 35 U.S.C. 371 to comply with these

requirements.

Response: As discussed supra, Sec. 1.77 merely expresses the

Office's preference for the arrangement of the application elements.

The Office may advise an applicant that the application does not comply

with the format set forth in Sec. 1.77, and suggest this format for the

applicant's consideration; however, the Office will not require any

application to comply with the format set forth in Sec. 1.77.

Therefore, there is no conflict between Sec. 1.77 and the PCT.

Comment (19): One comment noted that Secs. 1.154 and 1.163 apply to

design and plant applications, and, as such, they are not in conflict

with PCT Rules. The comment suggested that it would,

[[Page 42799]]

however, be preferable that all types of U.S. applications maintain the

same order of application elements, and that this order be the order

set forth by the PCT Rules.

Response: As discussed supra, the arrangement of the elements of an

application set forth in Sec. 1.77 is not mandatory, and, as such,

Sec. 1.77 is not in conflict with the PCT or PCT Rules. Section 1.77

merely expresses the Office's preference for the arrangement of the

elements of an application. The Office's preference for the format of

design applications (Sec. 1.154) and plant applications (Sec. 1.163) is

the same as the Office's preference for utility applications

(Sec. 1.77).

Comment (20): One comment stated that in the absence of statutory

requirements for the application elements proposed in Secs. 1.77,

1.154, and 1.163, the rule should clearly state that these application

elements or arrangements are preferred but not mandatory.

Response: Sections 1.77, 1.154, and 1.163 employ the phrase

``should'' rather than ``must,'' which is the language of a precatory

statement. Therefore, Secs. 1.77, 1.154, and 1.163 currently state that

these application elements or arrangements are preferred, but are not

mandatory.

Comment (21): One comment questioned whether the Application

Transmittal Form, and Fee Transmittal Form set forth in Sec. 1.77

should be numbered pages 1 and 2 pursuant to Sec. 1.52, and further

questioned where the drawings and oath or declaration are to be

numbered.

Response: Section 1.52 has been changed to provide that the pages

of the specification, not the application, should be consecutively

numbered beginning with page 1. The Application Transmittal Form, and

Fee Transmittal Form set forth in Sec. 1.77 are not part of the

specification. As such, they should not be numbered as pages 1 and 2,

respectively. Likewise, the drawings and oath or declaration are not

part of the specification, and need not be numbered.

Comment (22): One comment stated that the failure to include the

phrase ``not applicable'' by all of the application elements not

required by statute or regulation rendered it unclear as to whether the

Office would object to the lack of an application element for which the

phrase ``not applicable'' is not included.

Response: The Office anticipates that an applicant choosing to use

the Transmittal forms provided by the Office will arrange his or her

application in the format suggested by the Office. The patent statutes

and regulations set forth the requirements for a complete application,

as well as the requirements for obtaining a filing date in an

application. Applications are examined for compliance with the patent

statutes and regulations, not for consistency with any particular

transmittal form.

Comment (23): One comment noted, in regard to Sec. 1.84(c), that

the drawings of an international application, which are often used for

processing in the Office, will have the World Organization (WO)

publication number and International Bureau (IB) publication date on

the top of the drawing.

Response: The WO publication number and IB publication date placed

on the top of the drawing of an international application is not

objectionable under Sec. 1.84(c).

Comment (24): One comment stated that the scan target points

conflict with PCT Rule 11.6(e). As such, the scan target points would

have to be removed from applications to be filed as an international

application. The comment further stated that these target points are

unnecessary in view of the paper size and margin requirements.

Response: Section 1.84(g) states that drawings ``should,'' and not

``must,'' have scan target points printed on two catercorner margin

corners. Thus, Sec. 1.84(g) merely expresses the Office's preference

for scan target points on the drawings for filming and printing

purposes, which are considered desirable due to the different sights on

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

11 inch) drawing sheets. An applicant wishing to provide scan target

points on drawings that will later be filed in the EPO may simply copy

the drawings to be filed in the EPO, place the scan target points only

on the Office copy of the drawings, and submit the copy of the drawings

containing the scan target points to the Office. Likewise, applicants

filing drawings that were previously filed in the EPO should simply add

scan target points only to the copy of the drawings to be filed in the

Office. Nevertheless, as Sec. 1.84(g) merely expresses a preference for

scan target points for Office filming and printing purposes, an

applicant intending to later file the application in the EPO, or any

applicant, is at liberty to not include such scan target points on the

drawings. The Office will not object to the absence of scan target

points on any drawings filed in the Office. Therefore, Sec. 1.84(g)

does not include a requirement in excess of, or inconsistent, with PCT

Rules.

Comment (25): One comment stated that the term ``catercorner'' is

slang, and suggested that it be replaced in Sec. 1.84(g) with a phrase

such as ``diagonally opposite.''

Response: The term ``catercorner'' is not slang. While there are a

number of acceptable English phrases to denote diagonally opposite, the

term ``catercorner'' was selected to avoid using a multiple word phrase

where a single word will suffice.

Comment (26): One comment stated that the language proposed to be

added to Sec. 1.97 regarding a reexamination or patent owner is

inconsistent with Sec. 1.533 and suggested that it be deleted.

Response: The suggestion is adopted.

Comment (27): One comment stated that Sec. 1.131 does not specify

whether the phrase ``application'' includes provisional applications.

The comment suggested that Sec. 1.131 be amended to state ``unless the

date of such patent or publication is more than one year prior to the

earliest date on which the inventor's or patent owner's application or

provisional application from which that application claims priority

therefrom was filed in this country.''

Response: The proposed change to Sec. 1.131 is not adopted. It is

well established that the filing date of any abandoned application co-

pending with and referred to in a patent is the effective date of the

patent with respect to the common subject matter disclosed in the

patent and abandoned application. See In re Switzer, 166 F.2d 827, 77

USPQ 156 (CCPA 1948). Section 1.131 does not make a specific reference

to nonprovisional applications for which a benefit is claimed under 35

U.S.C. 120; however, it is understood that the effective date of any

patent sought to be antedated pursuant to Sec. 1.131 is the earliest

filing date of any application to which the patent is entitled to under

35 U.S.C. 120 with respect to the common subject matter disclosed in

the patent and the application. The provisions of title 35, except for

35 U.S.C. 115, 131, 135 and 157, apply to provisional applications. 35

U.S.C. 111(b)(8). It is therefore likewise unnecessary to specifically

reference provisional applications in Sec. 1.131.

Comment (28): Several comments objected to Secs. 1.291 and 1.292 as

pre-grant opposition, especially in view of the pre-grant publication

of pending applications that would be provided for in H.R. 1733, if

enacted, and the expanded reexamination that would be provided for in

H.R. 1732, if enacted. The comments either suggested that the protest

and public use proceeding

[[Page 42800]]

provisions of Secs. 1.291 and 1.292 be severely limited or abolished.

Response: The changes to Secs. 1.291 and 1.292 place greater

obligations on third parties seeking to use these sections. As such,

this rule change does not add to any third party's ability to

participate in the prosecution of a pending application. Nevertheless,

as neither H.R. 1732 nor H.R. 1733 has presently been enacted, analysis

of whether modification of Secs. 1.291 and 1.292 in addition to that

proposed in the Notice of Proposed Rulemaking is desirable in a pre-

grant publication or expanded reexamination system is held in abeyance

pending enactment of H.R. 1733 or 1732.

Comment (29): One comment noted that any standardization of patent

applications should not include pre-printed forms taking eleven hours

to complete. The comment further suggested that word-processor versions

of any collection of information, rather than pre-printed forms, would

be of greater assistance to members of the public.

Response: Initially, the Notice of Proposed Rulemaking indicated

that the initial patent application (e.g., the specification, drawings,

as well as the standard forms), not merely the proposed standardized

forms, is a collection of information estimated to average eleven hours

to complete. The Notice of Proposed Rulemaking stated that the public

reporting burden for these collections of information is estimated to

average: (1) Twelve minutes per response for the Fee Transmittal form,

(2) twelve minutes per response for the Utility Patent Application

Transmittal form, (3) twelve minutes per response for the Design Patent

Application Transmittal form, (4) twelve minutes per response for the

Plant Patent Application Transmittal form, (5) twelve minutes per

response for the Plant Color Coding Sheet, (6) twenty-four minutes per

response for the Declaration form, and (7) twenty-four minutes per

response for the Plant Patent Application Declaration. Nevertheless,

the final rules do not require the use of any standardized form. The

Office publishes standardized forms only as an aid to practitioners and

applicants.

Comment (30): One comment questioned whether use of the

standardized versions of the various forms would be required. Another

comment stated that the Office has no authority to require the use of

the published forms in the absence of statutory authority.t

Response: Use of the forms included for comment with the Notice of

Proposed Rulemaking is not mandatory. That is, an applicant need not

use the standardized versions of the Fee Transmittal form, Utility

Patent Application Transmittal form, Design Patent Application

Transmittal form, Plant Patent Application Transmittal form, Plant

Color Coding Sheet, Declaration form and Plant Patent Application

Declaration form, and need not use any fee transmittal form,

application transmittal form, or plant color coding sheet. These forms

were created to assist applicants in filing a patent application and to

help ensure the filing of a complete application accompanied by the

appropriate fees, thereby avoiding unnecessary delays in the

examination of the application.

Comment (31): One comment stated that the Office should not require

the use of mandated forms, and if the Office requires the use of

mandated forms, the Office should revise the forms to render them

readily reproducible by conventional software, and should arrange for

versions of these forms in various formats to be distributed by the

Internet, bulletin board, or floppy disk. Another comment suggested

that the Office should make its form or templates available for

electronic copying.

Response: Copies of the standard forms provided by the Office may

be obtained by contacting the Customer Service Center of the Office of

Initial Patent Examination at (703) 308-1214. Also, many standardized

forms have been loaded on the Office's Internet Website and may be

electronically copied via the Internet through anonymous file transfer

protocol (ftp) (address: ftp.uspto.gov). Nevertheless, use of the forms

included for comment with the Notice of Proposed Rulemaking is not

mandatory.

Comment (32): One comment questioned why there is a box with an

instruction to type a plus sign in the box at the very top of the

standardized forms.

Response: As discussed supra, the Office plans to replace or

augment the current microfilming process with an electronic data base

which captures at least the technical content of the application-as-

filed for internal Office use. Typing a plus sign (+) into this box

will facilitate the image scanner in aligning the remaining typing on

the form during the scanning process.

Comment (33): One comment questioned: (1) Why the application

transmittal forms do not have a place for applicant to indicate the

type of new utility application being transmitted (e.g., a provisional,

original, continuation, division, continuation-in-part, reissue), and

(2) how the Office official will obtain this information for entry in

the official use ``application type'' box.

Response: The Utility Patent Application Transmittal form sets

forth instructions for filing utility applications under Sec. 1.53 in

the arrangement set forth in Sec. 1.77. All non-reissue, nonprovisional

utility applications (i.e., original, continuation, divisional, and

continuation-in-part applications) filed under Sec. 1.53 should be

submitted using the Utility Patent Application Transmittal form. The

Design Patent Application Transmittal form sets forth instructions for

filing design applications in the arrangement set forth in Sec. 1.154.

All non-reissue design applications should be submitted using the

Design Patent Application Transmittal form. The Plant Patent

Application Transmittal form sets forth instructions for filing plant

applications in the arrangement set forth in Sec. 1.163. All non-

reissue, nonprovisional plant applications should be submitted using

the Plant Patent Application Transmittal form.

A Reissue Patent Application Transmittal form is also available,

and all applications for the reissue of a patent should be submitted

using the Reissue Patent Application Transmittal form. The cover sheet

provided for in Sec. 1.53(b)(2)(i) for a provisional application

functions as a transmittal sheet for a provisional application. As

such, the standardized Provisional Application Cover Sheet is the

transmittal form for a provisional application. The provisional

application cover sheet was published in the rulemaking entitled

``Changes to Implement 20-Year Patent Term and Provisional

Applications,'' in the Federal Register at 60 FR 20230-31 (April 25,

1995), and in the Patent and Trademark Office Official Gazette at 1174

Off. Gaz. Pat Office 45-46 (May 2, 1995).

To provide a place on the Application Transmittal form for claims

under 35 U.S.C. 119, 120, or 121 would require the use of an

unacceptably smaller font on the Application Transmittal form. The

Declaration forms provide a place for stating claims under 35 U.S.C.

119, 120 or 121. The inclusion on filing of an executed or unexecuted

Declaration form containing this information would assist the Office in

ascertaining whether the application is an original, continuation,

divisional, or continuation-in-part application. In addition, in the

event that H.R. 1733 is enacted, and the proposed changes to

Secs. 1.55(a) and 1.78(a)(2) are adopted substantially as proposed, the

routine

[[Page 42801]]

inclusion of claims for priority under 35 U.S.C. 119, 120, or 121 in an

executed or unexecuted declaration form accompanying the application

papers would be an excellent mechanism for avoiding an inadvertent

failure to timely submit a claim for priority under 35 U.S.C. 119, 120,

or 121.

Comment (34): One comment noted that the heading ``DECLARATION''

does not state the types of applications with which the declaration

form could be used. The comment questioned whether it is intended to be

used with any type of nonprovisional application except plant

applications for which a separate form is proposed.

Response: The declaration form containing the heading

``DECLARATION'' is intended to be used with any type of nonprovisional

application except plant applications, for which a separate Plant

Declaration form is provided.

Comment (35): One comment suggested that in the foreign priority

claim section of the Declaration form, the last line, the phrase

``having a filing date before that of the application on which priority

is claimed'' should be changed to ``for which priority is not

claimed,'' to cover those foreign applications which have a filing date

after that of the application on which priority is claimed and the

benefit of which applicant does not want to claim. The comment also

indicated that, frequently, an application is filed after the

Convention Year.

Response: The suggestion is not adopted. Section 1.63(c) requires

that an oath or declaration in any application in which a claim for

priority is made pursuant to Sec. 1.55 identify * * * ``any foreign

application having a filing date before that of the application on

which priority is claimed, by specifying the application number,

country, day, month, and year of its filing.'' Thus, the language in

the Declaration form aids applicants in submitting a declaration in

compliance with Sec. 1.63(c). Any foreign application having a filing

date before that of the application on which priority is claimed is, by

definition, a foreign application for which priority is not claimed.

Comment (36): One comment suggested that in the foreign priority

claim section, the right hand columns, the heading should be corrected

to ``Certified Copy Attached'' since the Office does not routinely want

uncertified copies.

Response: The suggestion is adopted. The Declaration form has been

modified accordingly.

Comment (37): One comment noted that the Fee Calculation and

Application Transmittal are currently on a single sheet/form, where the

proposed forms provide a separate sheet/form for each. The comment also

noted that the current Declaration form is a single sheet, where the

proposed Declaration form contains multiple sheets.

Response: The Office currently receives application transmittals,

fee calculations/transmittals and declarations in a variety of forms

and in a multitude of formats. The proposed forms were developed as a

result of an analysis of the current practices and requirements of

applicants, as well as the Office's plans to scan application data from

these forms into an electronic data base. The Fee Transmittal form was

created to aid applicants in submitting the fees due on filing a new

patent application, as well as the fees that may be due throughout the

prosecution of the application. The Application Transmittal serves to

both aid applicants in filing a complete application, and simplify the

pre-examination processing of the application. To permit the inclusion

of additional fee calculation and application transmittal information

on the standardized forms, and to provide a Fee Transmittal form for

use throughout the prosecution of the application, a separate Fee

Transmittal form and Application Transmittal form were developed. A

multi-page Declaration form is necessary to accommodate the Office's

plans to scan application data from this Declaration form into an

electronic data base.

Comment (38): One comment indicated that the meaning or purpose of

``suffix'' in the inventor signature block is unclear, and requested an

explanation as to whether it refers to ``Jr.'' or ``II,'' or whether it

is a place to put the mother's name for those inventors whose family

name is followed by their mother's name.

Response: The field on the Declaration form labeled (inventor)

``suffix'' is intended to provide the applicant with an option to

indicate family position relative to age. Examples of an inventor's

suffix are: Jr., Sr., and III. This information is tracked by the

Office and is necessary to print patents which accurately reflect

bibliographic information about the inventor. The use of this field and

the data expected will be clarified and specified in the form

instructions.

Comment (39): One comment questioned the meaning or purpose of

``Applicant Authority'' in the last line of the inventor data block.

Response: The phrase ``Applicant Authority'' indicates the

authority that the applicant has in executing the application (e.g.,

inventor, executor (Sec. 1.42), assignee (Sec. 1.47(b)). This field is

an optional field for the applicant to complete. The electronic

versions of the proposed standard declaration forms would provide the

applicant with directions and a list of valid codes that correspond

with a specific identification of the authority the applicant retains

(e.g., the Authority Code for an executor will be ``04'').

Comment (40): One comment stated that due to the spacing and small

fonts on the fee transmittal form, this sheet cannot be used with a

conventional word processor.

Response: To accommodate all the fee descriptions on a one-page fee

transmittal it was necessary to use smaller fonts in the form's design.

These fonts are available in Word and WordPerfect. An electronic

version of the fee transmittal will be available from the Office soon.

Comment (41): One comment stated that the ``one form fits all''

mentality of the fee transmittal form should be reconsidered since

certain fees are submitted only once during the prosecution of an

application.

Response: The proposed standard one-page fee form is primarily to

facilitate and simplify the fee payment process. The one-page fee

transmittal is intended to aid applicants in providing complete fee

information to the Office for each application and paper submission.

This will enable the Office to more efficiently process and record fee

payments, which will avoid delays in the prosecution of an application.

Other Considerations

This final rule change is in conformity with the requirements of

the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order

12612, and the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq.

It has been determined that this final rule is not significant for the

purposes of Executive Order 12866.

The Assistant General Counsel for Legislation and Regulation of the

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

Small Business Administration, that this rule change will not have a

significant economic impact on a substantial number of small entities

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

this rule change is to simplify and clarify the rules governing the

form of patent application papers.

The Office has also determined that this notice has no Federalism

implications affecting the relationship between the National Government

and

[[Page 42802]]

the States as outlined in Executive Order 12612.

Notwithstanding any other provision of law, no person is required

to respond to nor shall any person be subject to a penalty for failure

to comply with a collection of information subject to the requirements

of the Paperwork Reduction Act unless that collection of information

displays a currently valid OMB control number.

This final rule package contains a collection of information

subject to the Paperwork Reduction Act of 1995, 44 U.S.C. 3501 et seq.

This collection of information is currently approved by the Office of

Management and Budget under Control No. 0651-0032. This collection of

information includes the initial patent application filing, the Fee

Transmittal form, the Utility Patent Application Transmittal form, the

Design Patent Application Transmittal form, the Plant Patent

Application Transmittal form, the Plant Color Coding Sheet, the

Declaration form, and the Plant Patent Application Declaration form.

The above-mentioned forms will reduce the burden and uncertainty

associated with the submission of an application and related

information, and enhance the Office's ability to use standardized

automation techniques (optical character recognition, etc.) to record

and process information concerning applications. The public reporting

burden for these collections of information is estimated to average:

(1) Ten hours per response for the specification and drawings of an

application, (2) twelve minutes per response for the Fee Transmittal

form, (3) twelve minutes per response for the Utility Patent

Application Transmittal form, (4) twelve minutes per response for the

Design Patent Application Transmittal form, (5) twelve minutes per

response for the Plant Patent Application Transmittal form, (6) twelve

minutes per response for the Plant Color Coding Sheet, (7) twenty-four

minutes per response for the Declaration form, and (8) twenty-four

minutes per response for the Plant Patent Application Declaration.

These estimates include the time for reviewing instructions, searching

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

completing and reviewing the collections of information.

Send comments regarding this burden estimate or any other aspect of

this collection of information, including suggestions for reducing this

burden to the Office of System Quality and Enhancement, Data

Administration Division, Patent and Trademark Office, Washington, DC

20231, and to the Office of Information and Regulatory Affairs, Office

of Management and Budget, Washington, DC 20503 (ATTN: Paperwork

Reduction Act Project 0651-0032).

List of Subjects in 37 CFR Part 1

Administrative practice and procedure, Courts, Freedom of

Information, Inventions and patents, Reporting and recordkeeping

requirements, Small businesses.

For the reasons set forth in the preamble, 37 CFR Part 1 is amended

as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

1. The authority citation for 37 CFR Part 1 continues to read as

follows:

Authority: 35 U.S.C. 6, unless otherwise noted.

2. Section 1.5 is amended by adding paragraph (f) to read as

follows:

Sec. 1.5 Identification of application, patent or registration.

* * * * *

(f) When a paper concerns a provisional application, it should

identify the application as such and include the application number.

3. Section 1.12 is amended by revising paragraph (c) to read as

follows:

Sec. 1.12 Assignment records open to public inspection.

* * * * *

(c) Any request by a member of the public seeking copies of any

assignment records of any pending or abandoned patent application

preserved in confidence under Sec. 1.14, or any information with

respect thereto, must:

(1) Be in the form of a petition accompanied by the petition fee

set forth in Sec. 1.17(i); or

(2) Include written authority granting access to the member of the

public to the particular assignment records from the applicant or

applicant's assignee or attorney or agent of record.

* * * * *

4. Section 1.14 is amended by revising the section heading and

paragraphs (a), (b), and (e) to read as follows:

Sec. 1.14 Patent applications preserved in confidence.

(a) (1) Patent applications are generally preserved in confidence

pursuant to 35 U.S.C. 122. No information will be given concerning the

filing, pendency, or subject matter of any application for patent, and

no access will be given to, or copies furnished of, any application or

papers relating thereto, except as set forth in this section.

(2) Status information, which includes information such as whether

the application is pending, abandoned, or patented, as well as the

application number and filing date, may be supplied:

(i) Concerning an application or any application claiming the

benefit of the filing date of the application, if the application has

been identified by application number or serial number and filing date

in a published patent document,

(ii) Concerning the national stage application or any application

claiming the benefit of the filing date of a published international

application, if the United States of America has been indicated as a

Designated State in the international application, or

(iii) When it has been determined by the Commissioner to be

necessary for the proper conduct of business before the Office.

(3) Access to, or copies of, an application may be provided:

(i) When the application is open to the public as provided in

Sec. 1.11(b),

(ii) When written authority in that application from the applicant,

the assignee of the application, or the attorney or agent of record has

been granted,

(iii) When it has been determined by the Commissioner to be

necessary for the proper conduct of business before the Office, or

(iv) To any person on written request, without notice to the

applicant, when the application is abandoned and available and is:

(A) Referred to in a U.S. patent,

(B) Referred to in an application open to public inspection,

(C) An application which claims the benefit of the filing date of

an application open to public inspection, or

(D) An application in which the applicant has filed an

authorization to lay open the complete application to the public.

(b) Complete applications (Sec. 1.51(a)) which are abandoned may be

destroyed and hence may not be available for access or copies as

permitted by paragraph (a)(3)(iv) of this section after 20 years from

their filing date, except those to which particular attention has been

called and which have been marked for preservation.

* * * * *

(e) Any request by a member of the public seeking access to, or

copies of, any pending or abandoned application preserved in confidence

pursuant to paragraph (a) of this section, or any papers relating

thereto, must:

[[Page 42803]]

(1) Be in the form of a petition and be accompanied by the petition

fee set forth in Sec. 1.17(i); or

(2) Include written authority granting access to the member of the

public in that particular application from the applicant or the

applicant's assignee or attorney or agent of record.

5. Section 1.52 is amended by revising paragraphs (a) and (b) to

read as follows:

Sec. 1.52 Language, paper, writing, margins.

(a) The application, any amendments or corrections thereto, and the

oath or declaration must be in the English language except as provided

for in Sec. 1.69 and paragraph (d) of this section, or be accompanied

by a verified translation of the application and a translation of any

corrections or amendments into the English language. All papers which

are to become a part of the permanent records of the Patent and

Trademark Office must be legibly written either by a typewriter or

mechanical printer in permanent dark ink or its equivalent in portrait

orientation on flexible, strong, smooth, non-shiny, durable, and white

paper. All of the application papers must be presented in a form having

sufficient clarity and contrast between the paper and the writing

thereon to permit the direct reproduction of readily legible copies in

any number by use of photographic, electrostatic, photo-offset, and

microfilming processes and electronic reproduction by use of digital

imaging and optical character recognition. If the papers are not of the

required quality, substitute typewritten or mechanically printed papers

of suitable quality will be required. See Sec. 1.125 for filing

substitute typewritten or mechanically printed papers constituting a

substitute specification when required by the Office.

(b) Except for drawings, the application papers (specification,

including claims, abstract, oath or declaration, and papers as provided

for in this part and also papers subsequently filed, must have each

page plainly written on only one side of a sheet of paper, with the

claim or claims commencing on a separate sheet and the abstract

commencing on a separate sheet. See Secs. 1.72(b) and 1.75(h). The

sheets of paper must be the same size and either 21.0 cm. by 29.7 cm.

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

must include a top margin of at least 2.0 cm. (\3/4\ inch), a left side

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

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

inch), and no holes should be made in the sheets as submitted. The

lines of the specification, and any amendments to the specification,

must be 1\1/2\ or double spaced. The pages of the specification

including claims and abstract must be numbered consecutively, starting

with 1, the numbers being centrally located above or preferably, below,

the text. See Sec. 1.84 for drawings.

* * * * *

6. Section 1.54 is amended by revising paragraph (b) to read as

follows:

Sec. 1.54 Parts of application to be filed together; filing receipt.

* * * * *

(b) Applicant will be informed of the application number and filing

date by a filing receipt.

7. Section 1.58 is amended by removing and reserving paragraph (b)

and revising the section heading and paragraph (c) to read as follows:

Sec. 1.58 Chemical and mathematical formulae and tables.

* * * * *

(b) [Reserved]

(c) Chemical and mathematical formulae and tables must be presented

in compliance with Sec. 1.52 (a) and (b), except that chemical and

mathematical formulae or tables may be placed in a landscape

orientation if they cannot be presented satisfactorily in a portrait

orientation. Typewritten characters used in such formulae and tables

must be chosen from a block (nonscript) type font or lettering style

having capital letters which are at least 0.21 cm. (0.08 inch) high

(e.g., elite type). A space at least 0.64 cm. (\1/4\ inch) high should

be provided between complex formulae and tables and the text. Tables

should have the lines and columns of data closely spaced to conserve

space, consistent with a high degree of legibility.

8. Section 1.62 is amended by revising paragraphs (e) and (f) to

read as follows:

Sec. 1.62 File wrapper continuing procedure.

* * * * *

(e) An application filed under this section will utilize the file

wrapper and contents of the prior application to constitute the new

continuation, continuation-in-part, or divisional application but will

be assigned a new application number. Changes to the prior application

must be made in the form of an amendment to the prior application as it

exists at the time of filing the application under this section. No

copy of the prior application or new specification is required. The

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

a filing date as of the date of deposit of the request for an

application under this section will not be granted to the application

unless a petition with the fee set forth in Sec. 1.17(i) is filed with

instructions to cancel the copy or specification.

(f) The filing of an application under this section will be

construed to include a waiver of confidence by the applicant under 35

U.S.C. 122 to the extent that any member of the public who is entitled

under the provisions of Sec. 1.14 to access to, or information

concerning either the prior application or any continuing application

filed under the provisions of this section may be given similar access

to, or similar information concerning, the other application(s) in the

file wrapper.

* * * * *

9. Section 1.72 is amended by revising paragraph (b) to read as

follows:

Sec. 1.72 Title and abstract.

* * * * *

(b) A brief abstract of the technical disclosure in the

specification must commence on a separate sheet, preferably following

the claims, under the heading ``Abstract of the Disclosure.'' The

purpose of the abstract is to enable the Patent and Trademark Office

and the public generally to determine quickly from a cursory inspection

the nature and gist of the technical disclosure. The abstract shall not

be used for interpreting the scope of the claims.

10. Section 1.75 is amended by revising paragraph (g) and adding

paragraphs (h) and (i) to read as follows:

Sec. 1.75 Claim(s).

* * * * *

(g) The least restrictive claim should be presented as claim number

1, and all dependent claims should be grouped together with the claim

or claims to which they refer to the extent practicable.

(h) The claim or claims must commence on a separate sheet.

(i) Where a claim sets forth a plurality of elements or steps, each

element or step of the claim should be separated by a line indentation.

11. Section 1.77 is revised to read as follows:

Sec. 1.77 Arrangement of application elements.

(a) The elements of the application, if applicable, should appear

in the following order:

(1) Utility Application Transmittal Form.

(2) Fee Transmittal Form.

(3) Title of the invention; or an introductory portion stating the

name, citizenship, and residence of the applicant, and the title of the

invention.

[[Page 42804]]

(4) Cross-reference to related applications.

(5) Statement regarding federally sponsored research or

development.

(6) Reference to a ``Microfiche appendix.'' (See Sec. 1.96 (c)).

The total number of microfiche and total number of frames should be

specified.

(7) Background of the invention.

(8) Brief summary of the invention.

(9) Brief description of the several views of the drawing.

(10) Detailed description of the invention.

(11) Claim or claims.

(12) Abstract of the Disclosure.

(13) Drawings.

(14) Executed oath or declaration.

(15) Sequence Listing (See Secs. 1.821 through 1.825).

(b) The elements set forth in paragraphs (a)(3) through (a)(5),

(a)(7) through (a)(12) and (a)(15) of this section should appear in

upper case, without underlining or bold type, as section headings. If

no text follows the section heading, the phrase ``Not Applicable''

should follow the section heading.

12. Section 1.78 is amended by removing paragraph (d) and revising

paragraphs (a)(2) and (c) to read as follows:

Sec. 1.78 Claiming benefit of earlier filing date and cross references

to other applications.

(a) * * *

(2) Any nonprovisional application claiming the benefit of one or

more prior filed copending nonprovisional applications or international

applications designating the United States of America must contain or

be amended to contain in the first sentence of the specification

following the title a reference to each such prior application,

identifying it by application number (consisting of the series code and

serial number) or international application number and international

filing date and indicating the relationship of the applications. Cross-

references to other related applications may be made when appropriate.

(See Sec. 1.14(a)).

* * * * *

(c) Where an application or a patent under reexamination and at

least one other application naming different inventors are owned by the

same party and contain conflicting claims, and there is no statement of

record indicating that the claimed inventions were commonly owned or

subject to an obligation of assignment to the same person at the time

the later invention was made, the assignee may be called upon to state

whether the claimed inventions were commonly owned or subject to an

obligation of assignment to the same person at the time the later

invention was made, and if not, indicate which named inventor is the

prior inventor.

13. Section 1.84 is amended by revising paragraphs (c), (f), (g),

and (x) to read as follows:

Sec. 1.84 Standards for drawings.

* * * * *

(c) Identification of drawings. Identifying indicia, if provided,

should include the application number or the title of the invention,

inventor's name, docket number (if any), and the name and telephone

number of a person to call if the Office is unable to match the

drawings to the proper application. This information should be placed

on the back of each sheet of drawings a minimum distance of 1.5 cm.

(\5/8\ inch) down from the top of the page. In addition, a reference to

the application number, or, if an application number has not been

assigned, the inventor's name, may be included in the left-hand corner,

provided that the reference appears within 1.5 cm. (\9/16\ inch) from

the top of the sheet.

* * * * *

(f) Size of paper. All drawing sheets in an application must be the

same size. One of the shorter sides of the sheet is regarded as its

top. The size of the sheets on which drawings are made must be:

(1) 21.0 cm. by 29.7 cm. (DIN size A4), or

(2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).

(g) Margins. The sheets must not contain frames around the sight;

i.e., the usable surface, but should have scan target points, i.e.,

cross-hairs, printed on two catercorner margin corners. Each sheet must

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

of at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm.

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

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

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

than 17.6 cm. by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by

27.9 cm. (8\1/2\ by 11 inch) drawing sheets.

* * * * *

(x) Holes. No holes should be made by applicant in the drawing

sheets. (See Sec. 1.152 for design drawings, Sec. 1.165 for plant

drawings, and Sec. 1.174 for reissue drawings.)

14. Section 1.96 is revised to read as follows:

Sec. 1.96 Submission of computer program listings.

(a) General. Descriptions of the operation and general content of

computer program listings should appear in the description portion of

the specification. A computer program listing for the purpose of this

section is defined as a printout that lists in appropriate sequence the

instructions, routines, and other contents of a program for a computer.

The program listing may be either in machine or machine-independent

(object or source) language which will cause a computer to perform a

desired procedure or task such as solve a problem, regulate the flow of

work in a computer, or control or monitor events. Computer program

listings may be submitted in patent applications as set forth in

paragraphs (b) and (c) of this section.

(b) Material which will be printed in the patent. If the computer

program listing is contained on ten printout pages or less, it must be

submitted either as drawings or as part of the specification.

(1) Drawings. If the listing is submitted as drawings, it must be

submitted in the manner and complying with the requirements for

drawings as provided in Sec. 1.84. At least one figure numeral is

required on each sheet of drawing.

(2) Specification. (i) If the listing is submitted as part of the

specification, it must be submitted in accordance with the provisions

of Sec. 1.52, at the end of the description but before the claims.

(ii) Any listing submitted as part of the specification must be

direct printouts (i.e., not copies) from the computer's printer with

dark solid black letters not less than 0.21 cm. high, on white,

unshaded and unlined paper, and the sheets should be submitted in a

protective cover. Any amendments must be made by way of submission of

substitute sheets.

(c) As an appendix which will not be printed. If a computer program

listing printout is eleven or more pages long, applicants must submit

such listing in the form of microfiche, referred to in the

specification (see Sec. 1.77(a)(6)). Such microfiche filed with a

patent application is to be referred to as a ``microfiche appendix.''

The ``microfiche appendix'' will not be part of the printed patent.

Reference in the application to the ``microfiche appendix'' must be

made at the beginning of the specification at the location indicated in

Sec. 1.77(a)(6). Any amendments thereto must be made by way of revised

microfiche.

(1) Availability of appendix. Such computer program listings on

[[Page 42805]]

microfiche will be available to the public for inspection, and

microfiche copies thereof will be available for purchase with the file

wrapper and contents, after a patent based on such application is

granted or the application is otherwise made publicly available.

(2) Submission requirements. Except as modified or clarified in

this paragraph (c)(2), computer-generated information submitted as a

``microfiche appendix'' to an application shall be in accordance with

the standards set forth in 36 CFR part 1230 (Micrographics).

(i) Film submitted shall be a first generation (camera film)

negative appearing microfiche (with emulsion on the back side of the

film when viewed with the images right-reading).

(ii) Reduction ratio of microfiche submitted should be 24:1 or a

similar ratio where variation from said ratio is required in order to

fit the documents into the image area of the microfiche format used.

(iii) At least the left-most third (50 mm. x 12 mm.) of the header

or title area of each microfiche submitted shall be clear or positive

appearing so that the Patent and Trademark Office can apply an

application number and filing date thereto in an eye-readable form. The

middle portion of the header shall be used by applicant to apply an

eye-readable application identification such as the title and/or the

first inventor's name. The attorney's docket number may be included.

The final right-hand portion of the microfiche shall contain sequence

information for the microfiche, such as 1 of 4, 2 of 4, etc.

(iv) Additional requirements which apply specifically to microfiche

of filmed paper copy:

(A) The first frame of each microfiche submitted shall contain a

test target.

(B) The second frame of each microfiche submitted must contain a

fully descriptive title and the inventor's name as filed.

(C) The pages or lines appearing on the microfiche frames should be

consecutively numbered.

(D) Pagination of the microfiche frames shall be from left to right

and from top to bottom.

(E) At a reduction of 24:1, resolution of the original microfilm

shall be at least 120 lines per mm. (5.0 target).

(F) An index, when included, should appear in the last frame (lower

right-hand corner when data is right-reading) of each microfiche.

(v) Microfiche generated by Computer Output Microfilm.

(A) The first frame of each microfiche submitted should contain a

resolution test frame.

(B) The second frame of each microfiche submitted must contain a

fully descriptive title and the inventor's name as filed.

(C) The pages or lines appearing on the microfiche frames should be

consecutively numbered.

(D) It is preferred that pagination of the microfiche frames be

from left to right and top to bottom but the alternative, i.e., from

top to bottom and from left to right, is also acceptable.

(E) An index, when included, should appear on the last frame (lower

right-hand corner when data is right-reading) of each microfiche.

15. Section 1.97 is amended by revising paragraphs (a) through (d)

to read as follows:

Sec. 1.97 Filing of information disclosure statement.

(a) In order for an applicant for a patent or for a reissue of a

patent to have an information disclosure statement in compliance with

Sec. 1.98 considered by the Office during the pendency of the

application, it must satisfy paragraph (b), (c), or (d) of this

section.

(b) An information disclosure statement shall be considered by the

Office if filed by the applicant:

(1) Within three months of the filing date of a national

application;

(2) Within three months of the date of entry of the national stage

as set forth in Sec. 1.491 in an international application; or

(3) Before the mailing date of a first Office action on the merits,

whichever event occurs last.

(c) An information disclosure statement shall be considered by the

Office if filed by the applicant after the period specified in

paragraph (b) of this section, provided that the statement is

accompanied by either a certification as specified in paragraph (e) of

this section or the fee set forth in Sec. 1.17(p), and is filed before

the mailing date of either:

(1) A final action under Sec. 1.113; or

(2) A notice of allowance under Sec. 1.311, whichever occurs first.

(d) An information disclosure statement shall be considered by the

Office if filed by the applicant after the period specified in

paragraph (c) of this section, provided that the statement is filed on

or before payment of the issue fee and is accompanied by:

(1) A certification as specified in paragraph (e) of this section;

(2) A petition requesting consideration of the information

disclosure statement; and

(3) The petition fee set forth in Sec. 1.17(i).

* * * * *

16. Section 1.107 is amended by revising paragraph (a) to read as

follows:

Sec. 1.107 Citation of references.

(a) If domestic patents are cited by the examiner, their numbers

and dates, and the names of the patentees must be stated. If foreign

published applications or patents are cited, their nationality or

country, numbers and dates, and the names of the patentees must be

stated, and such other data must be furnished as may be necessary to

enable the applicant, or in the case of a reexamination proceeding, the

patent owner, to identify the published applications or patents cited.

In citing foreign published applications or patents, in case only a

part of the document is involved, the particular pages and sheets

containing the parts relied upon must be identified. If printed

publications are cited, the author (if any), title, date, pages or

plates, and place of publication, or place where a copy can be found,

shall be given.

* * * * *

17. Section 1.110 is revised to read as follows:

Sec. 1.110 Inventorship and date of invention of the subject matter of

individual claims.

When more than one inventor is named in an application or patent,

the Patent and Trademark Office, when necessary for purposes of an

Office proceeding, may require an applicant, patentee, or owner to

identify the inventive entity of the subject matter of each claim in

the application or patent. Where appropriate, the invention dates of

the subject matter of each claim and the ownership of the subject

matter on the date of invention may be required of the applicant,

patentee or owner. See also Secs. 1.78(c) and 1.130.

18. A new Sec. 1.130 is added after the undesignated center heading

``Affidavits Overcoming Rejections'' to read as follows:

Sec. 1.130 Affidavit or declaration to disqualify commonly owned

patent as prior art.

(a) When any claim of an application or a patent under

reexamination is rejected under 35 U.S.C. 103 in view of a U.S. patent

which is not prior art under 35 U.S.C. 102(b), and the inventions

defined by the claims in the application or patent under reexamination

and by the claims in the patent are not identical but are not

patentably distinct, and the inventions are owned by the same party,

the applicant or owner of the patent under reexamination may disqualify

the patent as prior art. The patent can be disqualified as prior art by

submission of:

[[Page 42806]]

(1) A terminal disclaimer in accordance with Sec. 1.321(c), and

(2) An oath or declaration stating that the application or patent

under reexamination and the patent are currently owned by the same

party, and that the inventor named in the application or patent under

reexamination is the prior inventor under 35 U.S.C. 104.

(b) When an application or a patent under reexamination claims an

invention which is not patentably distinct from an invention claimed in

a commonly owned patent with the same or a different inventive entity,

a double patenting rejection will be made in the application or a

patent under reexamination. A judicially created double patenting

rejection may be obviated by filing a terminal disclaimer in accordance

with Sec. 1.321(c).

19. Section 1.131 is amended by revising paragraph (a) to read as

follows:

Sec. 1.131 Affidavit or declaration of prior invention to overcome

cited patent or publication.

(a) (1) When any claim of an application or a patent under

reexamination is rejected under 35 U.S.C. 102 (a) or (e), or 35 U.S.C.

103 based on a U.S. patent to another or others which is prior art

under 35 U.S.C. 102 (a) or (e) and which substantially shows or

describes but does not claim the same patentable invention, as defined

in Sec. 1.601(n), or on reference to a foreign patent or to a printed

publication, the inventor of the subject matter of the rejected claim,

the owner of the patent under reexamination, or the party qualified

under Secs. 1.42, 1.43, or 1.47, may submit an appropriate oath or

declaration to overcome the patent or publication. The oath or

declaration must include facts showing a completion of the invention in

this country or in a NAFTA or WTO member country before the filing date

of the application on which the U.S. patent issued, or before the date

of the foreign patent, or before the date of the printed publication.

When an appropriate oath or declaration is made, the patent or

publication cited shall not bar the grant of a patent to the inventor

or the confirmation of the patentability of the claims of the patent,

unless the date of such patent or printed publication is more than one

year prior to the date on which the inventor's or patent owner's

application was filed in this country.

(2) A date of completion of the invention may not be established

under this section before December 8, 1993, in a NAFTA country, or

before January 1, 1996, in a WTO member country other than a NAFTA

country.

* * * * *

20. Section 1.132 is revised to read as follows:

Sec. 1.132 Affidavits or declarations traversing grounds of rejection.

When any claim of an application or a patent under reexamination is

rejected on reference to a U.S. patent which substantially shows or

describes but does not claim the same patentable invention, as defined

in Sec. 1.601(n), on reference to a foreign patent, on reference to a

printed publication, or on reference to facts within the personal

knowledge of an employee of the Office, or when rejected upon a mode or

capability of operation attributed to a reference, or because the

alleged invention is held to be inoperative, lacking in utility,

frivolous, or injurious to public health or morals, affidavits or

declarations traversing these references or objections may be received.

21. Section 1.154 is revised to read as follows:

Sec. 1.154 Arrangement of specification.

(a) The elements of the design application, if applicable, should

appear in the following order:

(1) Design Application Transmittal Form.

(2) Fee Transmittal Form.

(3) Preamble, stating name of the applicant and title of the

design.

(4) Cross-reference to related applications.

(5) Statement regarding federally sponsored research or

development.

(6) Description of the figure or figures of the drawing.

(7) Feature Description.

(8) A single claim.

(9) Drawings or photographs.

(10) Executed oath or declaration (See Sec. 1.153(b)).

(b) [Reserved]

22. Section 1.163 is amended by adding new paragraphs (c) and (d)

to read as follows:

Sec. 1.163 Specification.

* * * * *

(c) The elements of the plant application, if applicable, should

appear in the following order:

(1) Plant Application Transmittal Form.

(2) Fee Transmittal Form.

(3) Title of the invention.

(4) Cross-reference to related applications.

(5) Statement regarding federally sponsored research or

development.

(6) Background of the invention.

(7) Brief summary of the invention.

(8) Brief description of the drawing.

(9) Detailed Botanical Description.

(10) A single claim.

(11) Abstract of the Disclosure.

(12) Drawings (in duplicate).

(13) Executed oath or declaration.

(14) Plant color coding sheet.

(d) A plant color coding sheet as used in this section means a

sheet that specifies a color coding system as designated in a color

dictionary, and lists every plant structure to which color is a

distinguishing feature and the corresponding color code which best

represents that plant structure.

23. Section 1.291 is amended by revising paragraphs (a) and (b) to

read as follows:

Sec. 1.291 Protests by the public against pending applications.

(a) Protests by a member of the public against pending applications

will be referred to the examiner having charge of the subject matter

involved. A protest specifically identifying the application to which

the protest is directed will be entered in the application file if:

(1) The protest is submitted prior to the mailing of a notice of

allowance under Sec. 1.311; and

(2) The protest is either served upon the applicant in accordance

with Sec. 1.248, or filed with the Office in duplicate in the event

service is not possible.

(b) Protests raising fraud or other inequitable conduct issues will

be entered in the application file, generally without comment on those

issues. Protests which do not adequately identify a pending patent

application will be returned to the protestor and will not be further

considered by the Office. A protest submitted in accordance with the

second sentence of paragraph (a) of this section will be considered by

the Office if the application is still pending when the protest and

application file are brought before the examiner and it includes:

(1) A listing of the patents, publications, or other information

relied upon;

(2) A concise explanation of the relevance of each listed item;

(3) A copy of each listed patent or publication or other item of

information in written form or at least the pertinent portions thereof;

and

(4) An English language translation of all the necessary and

pertinent parts of any non-English language patent, publication, or

other item of information in written form relied upon.

* * * * *

24. Section 1.292 is amended by revising paragraphs (a) and (b) to

read as follows:

[[Page 42807]]

Sec. 1.292 Public use proceedings.

(a) When a petition for the institution of public use proceedings,

supported by affidavits or declarations is found, on reference to the

examiner, to make a prima facie showing that the invention claimed in

an application believed to be on file had been in public use or on sale

more than one year before the filing of the application, a hearing may

be had before the Commissioner to determine whether a public use

proceeding should be instituted. If instituted, the Commissioner may

designate an appropriate official to conduct the public use proceeding,

including the setting of times for taking testimony, which shall be

taken as provided by Secs. 1.671 through 1.685. The petitioner will be

heard in the proceedings but after decision therein will not be heard

further in the prosecution of the application for patent.

(b) The petition and accompanying papers, or a notice that such a

petition has been filed, shall be entered in the application file if:

(1) The petition is accompanied by the fee set forth in

Sec. 1.17(j);

(2) The petition is served on the applicant in accordance with

Sec. 1.248, or filed with the Office in duplicate in the event service

is not possible; and

(3) The petition is submitted prior to the mailing of a notice of

allowance under Sec. 1.311.

* * * * *

25. Section 1.315 is revised to read as follows:

Sec. 1.315 Delivery of patent.

The patent will be delivered or mailed upon issuance to the

correspondence address of record. See Sec. 1.33(a).

26. Section 1.321 is amended by revising paragraph (c) to read as

follows:

Sec. 1.321 Statutory disclaimers, including terminal disclaimers.

* * * * *

(c) A terminal disclaimer, when filed to obviate a judicially

created double patenting rejection in a patent application or in a

reexamination proceeding, must:

(1) Comply with the provisions of paragraphs (b)(2) through (b)(4)

of this section;

(2) Be signed in accordance with paragraph (b)(1) of this section

if filed in a patent application or in accordance with paragraph (a)(1)

of this section if filed in a reexamination proceeding; and

(3) Include a provision that any patent granted on that application

or any patent subject to the reexamination proceeding shall be

enforceable only for and during such period that said patent is

commonly owned with the application or patent which formed the basis

for the rejection.

27. Section 1.497 is revised to read as follows:

Sec. 1.497 Oath or declaration under 35 U.S.C. 371(c)(4).

(a) When an applicant of an international application desires to

enter the national stage under 35 U.S.C. 371 pursuant to Secs. 1.494 or

1.495, he or she must file an oath or declaration that:

(1) Is executed in accordance with either Secs. 1.66 or 1.68;

(2) Identifies the specification to which it is directed;

(3) Identifies each inventor and the country of citizenship of each

inventor; and

(4) States that the person making the oath or declaration believes

the named inventor or inventors to be the original and first inventor

or inventors of the subject matter which is claimed and for which a

patent is sought.

(b)(1) The oath or declaration must be made by all of the actual

inventors except as provided for in Secs. 1.42, 1.43 or 1.47.

(2) If the person making the oath or declaration is not the

inventor, the oath or declaration shall state the relationship of the

person to the inventor, the facts required by Secs. 1.42, 1.43 or 1.47,

and, upon information and belief, the facts which the inventor would

have been required to state.

(c) If the oath or declaration meets the requirements of paragraphs

(a) and (b) of this section, the oath or declaration will be accepted

as complying with 35 U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c).

However, if the oath or declaration does not also meet the requirements

of Sec. 1.63, a supplemental oath or declaration in compliance with

Sec. 1.63 will be required in accordance with Sec. 1.67.

Dated: August 13, 1996.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 96-21073 Filed 8-16-96; 8:45 am]

BILLING CODE 3510-16-P