1996 Changes to Patent Practice and Procedure

SUMMARY: The Patent and Trademark Office (Office) is proposing to amend

the rules of practice in patent cases to simplify the requirements of

the rules, rearrange portions of the rules for better context, and

eliminate unnecessary rules or portions thereof as part of a

government-wide effort to reduce the regulatory burden on the American

public. The procedure for filing of continuation and divisional

applications would be simplified. Another type of simplification being

proposed that would affect several rules is the acceptance of a

statement that errors were made without deceptive intent, unaccompanied

by any further showing of facts and circumstances. The naming of

inventors would no longer be required on filing of the application in

order to obtain a filing date, which would eliminate the need for

certain petitions to correct inventorship.

DATES: Written comments must be received on or before November 22,

1996, to ensure consideration.

Comments will be available for public inspection after receipt and

will be available on the Internet (address: [email protected]).

Commentators should note that since their comments will be made

publicly available, information that is not desired to be made public,

such as the address and phone number of the commentator, should not be

included in the comments. A public hearing will not be conducted.

ADDRESSES: Comments should be sent by mail message over the Internet

addressed to [email protected]

Comments may also be submitted by mail addressed to: Box Comments--

Patents, Assistant Commissioner for Patents, Washington, DC 20231,

Attention: Jeffrey V. Nase or by FAX to (703) 308-6916. Although

comments may be submitted by mail or FAX, the Office prefers to receive

comments via the Internet. Where comments are submitted by mail, the

Office would appreciate the comments to be electronically filed on a

DOS formatted 3\1/4\ inch disk along with a paper copy of the comments.

The comments will be available for public inspection in Suite 520,

of One Crystal Park, 2011 Crystal Drive, Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein, by telephone at

(703) 305-9285 or by mail addressed to: Box Comments--Patents,

Assistant Commissioner for Patents, Washington, DC 20231 marked to the

attention of Mr. Bernstein or by FAX to (703) 308-6916.

SUPPLEMENTARY INFORMATION: This proposed rule change seeks to implement

President Clinton's program of reducing the regulatory burden on the

American public, which program is supported by the Office as published

in the Official Gazette on June 6, 1995. 1175 Off. Gaz. Pat. Office 19,

20 and 22. The proposed changes are directed towards: (1)

Simplification of procedures for filing continuation and divisional

applications, establishing lack of deceptive intent in reissues,

petition practice, and in the filing of papers correcting improperly

requested small entity status; (2) elimination of unnecessary

requirements, such as certain types of petitions to correct

inventorship under Sec. 1.48; (3) removal of rules and portions thereof

that merely represent instructions as to the internal affairs of the

Office more appropriate for inclusion in the Manual of Patent Examining

Procedure (MPEP); (4) rearrangement of portions of rules to improve

their context; and (5) clarification of rules to aid in understanding

of the requirements that they set forth.

The Office is particularly interested in comments as to whether the

proposed rules if adopted should be applied to already pending reissue

oaths or declarations under the new proposed standards of Sec. 1.175 as

it is to be amended under the final rule and already pending petitions

and papers under Secs. 1.28(c)(2), 1.48 and 1.324 as they are to be

amended under the final rule for such papers submitted prior to the

effective date of any final rule change, i.e., should the advantages

proposed by these suggested rule changes that are incorporated into the

final rule be applied retroactively to papers submitted prior to the

effective date of the final rule.

Discussion of Specific Rules

If Title 37 of the Code of Federal Regulations, Parts 1, 3, 5 and 7

are amended as proposed:

Section 1.4(d) paragraphs (1) and (2) would be amended to place the

current subject matter of both paragraphs into paragraphs (d)(1) (i)

and (ii) with a clarifying reference in paragraph (d)(1)(ii) to the

submission of a copy of a copy.

Paragraph (d)(2) of Sec. 1.4 would be amended so that the

certifications set forth in the rule would be automatically made upon

presenting any paper to the Office by the party presenting the paper

and in an added paragraph (d)(3)(ii) identifying by the statute, 18

U.S.C. 1001 that sets forth the required standards of conduct.

Sanctions would be set forth in a Sec. 1.4(d)(3)(i) for violation of

the certifications in Sec. 1.4(d)(2) and for violations of the

standards of conduct in Sec. 1.4(d)(3)(ii).

The proposed amendments to Sec. 1.4(d) would support proposed

amendments to Secs. 1.6, 1.8, 1.10, 1.27, 1.28, 1.48, 1.52, 1,55, 1.69,

1.102, 1.125, 1.137, 1.377, 1.378, 1.804, 1.805, (1.821 and 1.825 will

be reviewed at a later date in connection with other matters), 3.26,

and 5.4 that would delete the requirement for verification (MPEP 602)

of statements of facts by applicants and other parties who are not

registered to practice before the Office. The absence of a required

verification has been a source of delay in the prosecution of

applications, particularly where such absence is the only defect noted.

The proposed change to Sec. 1.4(d) would automatically incorporate

required averments thereby eliminating the necessity for a separate

verification for each statement of facts that is to be presented,

except for those instances where the verification requirement is

retained. Similarly, the proposed amendments to Sec. 1.4(d) would

support a proposed amendment to Secs. 1.97 (Secs. 1.637 and 1.673 will

be reviewed at a later date in connection with other matters) that

would change the requirements for certifications to requirements for

statements. The oath or declaration under Secs. 1.63 and affidavits

under Secs. 1.131 and 1.132 would not be affected. The requirement in

Sec. 5.25(a)(3) for a verified statement would be maintained, as the

required explanation must include a showing of facts (evidence), not

mere allegations, which will be weighed by the official deciding the

petition for retroactive license. The statements in Secs. 1.494(e) and

1.495(f) that verification of translations of documents filed in a

language other than English may be required would be maintained, as

such requirements are made rarely and only when deemed necessary (when

persons persist in translations which appear on their face to be

inaccurate, for example). The requirements for certification of service

on parties in Secs. 1.248, 1.510, 1.637 and 10.142 would be maintained.

[[Page 49821]]

Section 1.4 would also have a new paragraph (g) related to an

applicant who has not made of record a registered attorney or agent

being required to state whether assistance was received in the

preparation or prosecution of a patent application. This is proposed to

be transferred from Sec. 1.33(b) for consistent contextual purposes.

Section 1.6 paragraph (e)(2) would be amended to remove the

requirement that the statement be verified in accordance with the

proposed change to Sec. 1.4(d)(2).

Section 1.8 paragraph (b)(3) would be amended to remove the

requirement that the statement be verified in accordance with the

proposed change to Sec. 1.4(d)(2).

Section 1.10 would be amended to remove the requirement for a

statement that is verified. See comments to Sec. 1.4(d). It is also

proposed to clarify the section by substitution of ``averring to the

fact'' with ``stating.''

Section 1.14 would have the title and paragraphs (a) and (e)

amended to replace the term ``secrecy'' by ``confidence'' to conform to

the usage in 35 U.S.C. 122. Paragraph (a) of Sec. 1.14 would have a

reference to serial number changed to application number. Section 1.14

would also be amended to have paragraph (f) added to recognize the

proposed change to Sec. 1.47 (a) and (b) that are also exceptions to

maintaining pending applications in confidence by providing public

notice of the prospective issuance of a pending application to

nonsigning inventors.

Section 1.17 (and Sec. 1.136(a)) would add a recitation to an

extension of time fee payment for a reply filed within a fifth month

after a nonstatutory or shortened statutory period for reply was set.

Section 1.17(a) is specifically proposed to be subdivided into

paragraphs (a)(1) through (a)(5), with paragraphs (a)(1) through (a)(4)

setting forth the amounts for one-month through four-month extension

fees proposed in Revision of Patent Fees for Fiscal Year 1997, 1186

Off. Gaz. Pat. Office 14 (May 7, 1996); 61 FR 19224 (May 1, 1996).

Paragraph (a)(5) would provide the small and other than small entity

amounts for the newly proposed fifth-month extension fee. Sections 1.17

(b), (c) and (d) are proposed to be removed as unnecessary in view of

proposed Sec. 1.17 (a)(1) through (a)(5).

Fee levels, as proposed by the Revision of Patent Fees for Fiscal

Year 1997, were used in establishing the fifth-month extension of time

fees for large and small entities for paragraph (a)(5) of Sec. 1.17. A

shortened statutory period for reply of one month may be set, thereby

allowing a fifth month for reply within the six-month statutory period

for response. Section 1.17(a) is being amended to recognize the

availability of a fifth-month extension of time when a one-month or a

thirty-day shortened statutory period is set (e.g., in a written

requirement for restriction). The addition of a fifth-month would then

also become available for replies with nonstatutory periods of time

set, such as for replies to Notices to File Missing Parts of

Applications.

Section 1.17(i), as proposed, would: add a petition fee under

Sec. 1.59 for expungement and return of papers, delete the references

to petitions under Secs. 1.60 and 1.62 to accord a filing date in view

of the proposed deletion of Secs. 1.60 and 1.62, and to change

``divisional reissues'' to ``multiple reissue applications.'' Moreover,

Sec. 1.17, as well as Secs. 1.103, 1.112, 1.113, 1.133, 1.134, 1.135,

1.136, 1.142, 1.144, 1.146, 1.191, 1.192, 1.291, 1.294, 1.484, 1.485,

1.488, 1.494, 1.495, 1.530, 1.550, 1.560, (1.605, 1.617, 1.640, and

1.652 will be reviewed at a later date in connection with other

matters), 1.770, 1.785, (1.821 will be reviewed at a later date in

connection with other matters), and 5.3, would replace the phrases

``response'' and ``respond'' with ``reply'' for consistency with

Sec. 1.111.

Section 1.21(n), as proposed, would delete the reference to an

improper application under Secs. 1.60 or 1.62 in view of the proposed

deletion of Secs. 1.60 and 1.62.

Section 1.26(a) is proposed to be amended to better track the

statutory language of 35 U.S.C. 42(d) by deleting ``[m]oney'' and

``actual,'' adding ``fee'' and adding back language relating to refunds

of fees paid that were not ``required'' that was inadvertently dropped

in the July 1, 1993, publication of title 37 CFR, and from subsequent

publications.

Section 1.27 (a) through (d) would be amended to remove the

requirement that a statement filed thereunder be ``verified.'' See

comments relating to Sec. 1.4(d). Section 1.27(b) is proposed to be

amended for clarification with the movement of a clause relating to

``any verified statement'' within a sentence.

Section 1.28(a) would be amended to remove the requirement for a

statement that is ``verified.'' See comments relating to Sec. 1.4(d).

Section 1.28(a) would also be amended to provide that a new small

entity statement would not be required for reissue or continued

prosecution (Sec. 1.53(b)(3)) applications where small entity status is

still proper and reliance is had on a reference to a small entity

statement filed in a prior application or patent or a copy thereof is

supplied.

Section 1.28(a) would be further amended to state that the payment

of a small entity basic statutory filing fee in a nonprovisional

continuing application, which claims benefit under 35 U.S.C. 119(e),

120, 121, or 365(c) of a prior application or in a continuing

prosecution application, or in a reissue application, wherein the prior

application or the patent has small entity status, will substitute for

the reference in the continuing or reissue application to the small

entity statement in the prior application or in the patent, thereby

establishing small entity status in such nonprovisional application.

Section 1.28(a) is also amended to require a new determination of

continued entitlement to small entity status for continued prosecution

applications filed under Sec. 1.53(b)(3) and to clarify that the

refiling of applications as continuations, divisions and continuation-

in-part applications and the filing of reissue applications also

require a new determination of continued entitlement to small entity

status prior to reliance on small entity status in a prior application

or patent.

Section 1.28(c) would have the requirement removed for a statement

of facts explaining how an error in payment of small entity fees

occurred in good faith and how and when the error was discovered. A fee

deficiency payment based on the difference between fees originally paid

as a small entity and the current large entity amount at the time of

full payment of the fee deficiency will be deemed to constitute a

belief by the party submitting the deficiency payment that small entity

status was established in good faith and that the original payment of

small entity fees was made in good faith. Any paper submitted under

Sec. 1.28(c) will be placed in the appropriate file without review

after the processing of any check or the charging of any fee deficiency

payment specifically authorized.

Section 1.33 would no longer provide that the required residence

and post office address of the applicant can appear elsewhere than in

the oath or declaration under Sec. 1.63. Section 1.63(a)(3) would be

amended to require that the post office address as well as the

residence be identified therein and not elsewhere. Permitting the

residence to be elsewhere in the application other than the oath or

declaration, as in current Sec. 1.33(a), is inconsistent with current

Sec. 1.63(c) that states the residence must appear in the oath or

declaration. The requirement for placement of the post office address

is proposed to be made equivalent to the requirement for the residence

to

[[Page 49822]]

eliminate confusion between the two, which often are the same

destination and are usually provided in the oath or declaration. The

reference in Sec. 1.33(a) to the assignee providing a correspondence

address has been moved within Sec. 1.33(a) for clarification. Other

clarifying language including a reference to Sec. 1.34(b), use of the

terms ``provided,'' ``furnished'' rather than ``notified,'' and

``application'' rather than ``case,'' while ``of which the Office''

would be deleted.

Section 1.33(b) would be removed and the subject matter transferred

to new Sec. 1.4(g).

Section 1.41(a) (and Sec. 1.53) would no longer require that a

patent be applied for in the name of the actual inventors for an

application for patent to receive a filing date. The requirement for

use of full names would be moved to Sec. 1.63(a) for better context.

The requirement for naming of the inventor or inventors would be

replaced with only a request that such names or an identifying name be

submitted on filing of the application. The use of very short

identifiers should be avoided to prevent confusion. Without supplying

at least an identifying name that is specific the Office may have no

ability or only a delayed ability to match any papers submitted after

filing of the application and before issuance of an identifying

Application number with the application file. Any identifier used that

is not an inventor's name must be specific, alphanumeric characters of

reasonable length, and must be presented in such a manner that it is

clear to application processing personnel what the identifier is and

where it is to be found. It is strongly suggested that applications

filed without an executed oath or declaration under Sec. 1.63 or 1.175

continue to use an inventor's name for identification purposes. Failure

to apprise the Office of the application identifier being used will

result in applicants having to resubmit papers that could not be

matched with the application and proof of the earlier receipt of such

papers where submission was time dependent.

Paragraph (a) of Sec. 1.41 would also be amended to recite that the

actual inventor or inventors of an application are set forth in an

executed Sec. 1.63 oath or declaration to correspond to the proposed

change in Sec. 1.53(b)(1)(iii). Hence, the recitation of the

inventorship in an application submitted under Sec. 1.53(d) without an

executed oath or declaration for purposes of identification may be

changed merely by the later submission of an oath or declaration

executed by a different inventive entity without recourse to a petition

under Sec. 1.48.

Section 1.47 would be amended to provide for publication in the

Official Gazette of a notice of filing for all applications submitted

under this section rather than only when notice to the nonsigning

inventor(s) is returned to the Office undelivered or when the address

of the nonsigning inventor(s) is unknown. The information to be

published includes: The Application number, filing date, invention

title and inventors identifying the missing inventor.

Section 1.47 would also be amended for clarification purposes. A

reference to an ``omitted inventor'' in Sec. 1.47(a) would be replaced

with ``nonsigning inventor.'' Statements in Secs. 1.47 (a) and (b) that

a patent will be granted upon a satisfactory showing to the

Commissioner would be deleted as unnecessary. Section 1.47(b) is

proposed to be amended to clarify that it applies only where none of

the inventors are willing or can be found to sign the Declaration by

substitution of ``an inventor'' by ``all the inventors.'' The use of

``must state'' in regard to the last known address would be deleted as

redundant in view of the explicit requirement for such address in the

rule. The sentence in Sec. 1.47(b) referring to the filing of the

assignment, written agreement to assign or other evidence of

proprietary interest would be deleted as redundant in view of the

requirement appearing earlier in Sec. 1.47(b) calling for ``proof of

pertinent facts.''

Section 1.48 for inventorship corrections in an application

(Sec. 1.324, for inventorship corrections in a patent, and Sec. 1.175,

for reissue declarations) would no longer require factual showings to

establish a lack of deceptive intent. All that will be needed is a

statement to that effect.

Section 1.48 would be amended in its title to clarify that the

section is related to patent applications as opposed to patents.

Section 1.48(a) would not require correction of the inventorship if

the inventorship or other identification under Sec. 1.41 was set forth

in error on filing of the application. Section 1.48(a) is proposed to

be amended to apply only to correction of inventor or inventors from

that named in an originally filed executed oath or declaration and not

to the naming of inventors or others for identification purposes as is

currently proposed under Sec. 1.41. The statement to be submitted would

be required only from the person named in error as an inventor or from

the person who through error was not named as an inventor rather than

from all the original named inventors so as to comply with 35 U.S.C.

116. The present requirement that any amendment of the inventorship

under Sec. 1.48(a) be ``diligently'' made would be removed. The

applicability of a rejection under 35 U.S.C. 102(f)/(g) against an

application with the wrong inventorship set forth therein and any

patent that would issue thereon is deemed to provide sufficient

motivation for prompt correction of the inventorship without the need

for a separate requirement for diligence.

A clarifying reference to Sec. 1.634 would be added in Sec. 1.48(a)

for instances when inventorship correction is necessary during an

interference and has been moved from Sec. 1.48(a)(4) for improved

contextual purposes.

The Sec. 1.48(a)(1) statement would require a statement only as to

the lack of deceptive intent rather than a statement of facts to

establish how the inventorship error was discovered and how it

occurred, since the latter is proposed to be deleted. Additionally, the

persons from whom a statement is required now includes any person not

named in error as an inventor but limits statements from the original

named inventors to only those persons named in error as inventors

rather than all persons originally named as inventors including those

correctly named. The paragraph would be amended to remove the

requirement that the statement be verified in accordance with the

proposed change to Sec. 1.4(d)(2).

Section 1.48(a)(2) would be amended for clarification purposes to

indicate the availability of Secs. 1.42, 1.43 or 1.47 in meeting the

requirement for an executed oath or declaration under Sec. 1.63 from

each actual inventor. Section 1.47 would only be applicable to the

person to be added as an inventor (inventors named in an application

transmittal letter can be deleted without petition). For those persons

already having submitted an executed oath or declaration under

Sec. 1.63, a petition under Sec. 1.183, requesting waiver of

reexecution of an oath or declaration, may be an appropriate remedy.

The requirement for an oath or declaration is maintained in

Sec. 1.48(a) notwithstanding its replacement in Sec. 1.324 for issued

patents by a statement of agreement or lack of disagreement with the

requested change in view of the need to satisfy the duty of disclosure

requirement in a pending application that is set forth in a Sec. 1.63

oath or declaration.

Section 1.48(a)(4) would be amended to include a citation to

Sec. 3.73(b) to clarify the requirements for submitting a written

consent of assignee, which is subject to the requirement under

Sec. 3.73(b), and to delete the reference to an application involved in

an interference, which is being moved to

[[Page 49823]]

Sec. 1.48(a). Section 1.48(a)(4) would also be amended to clarify that

the assignee required to submit its written consent is only the

existing assignee of the original named inventors at the time the

petition is filed and not any party that would become an assignee based

on the grant of the inventorship correction.

Section 1.48(b) would also be amended to remove the requirement

that a petition thereunder be diligently filed. The applicability of a

rejection under 35 U.S.C. 102(f)/(g) against an application with the

wrong inventorship set forth therein and any patent that would issue

thereon is deemed to provide sufficient motivation for prompt

correction of the inventorship without the need for a separate

requirement for diligence.

Section 1.48(b) would have a clarifying reference to Sec. 1.634

added for instances when inventorship correction is necessary during an

interference.

Section 1.48(c) would be amended so that a petition thereunder no

longer need meet the current requirements of Sec. 1.48(a), which are

also proposed to be changed. A statement from each inventor being added

that the inventorship amendment is necessitated by amendment of the

claims and that the error occurred without deceptive intent would be

required under Sec. 1.48(c)(1) rather than the previous requirement of

a statement from each original named inventor. The previous

requirements under Sec. 1.48(a) for an oath or declaration, the written

consent of an assignee and the written consent of any assignee are

retained, but are now separately set forth in Secs. 1.48(c)(2) through

(c)(4). The particular circumstances of a petition under this

paragraph, adding an inventor due to an amendment of the claims that

incorporates material attributable to the inventor to be added, is seen

to be indicative of a lack of deceptive intent in the original naming

of inventors. Accordingly, all that must be averred to is that an

amendment of the claims has necessitated correction of the inventorship

and that the inventorship error existing in view of the claim amendment

occurred without deceptive intent. The current requirement for

diligence in filing the petition based on an amendment to the claims

would not be retained as applicants have the right, prior to final

rejection or allowance, to determine when particular subject matter is

to be claimed. Applicants should note that any petition under Sec. 1.48

submitted after allowance is subject to the requirements of Sec. 1.312,

and a petition submitted after final rejection is not entered as a

matter of right. The statement of facts must be a verified statement if

made by a person not registered to practice before the Patent and

Trademark Office.

Section 1.48(c)(2) would clarify the availability of Secs. 1.42,

1.43 and 1.47 in meeting the requirement for an executed oath or

declaration under Sec. 1.63. Section 1.47 would only be applicable to

the person to be added as an inventor. For those persons already having

an executed oath or declaration under Sec. 1.63 a petition under

Sec. 1.183, requesting waiver of reexecution of an oath or declaration,

may be an appropriate remedy.

Section 1.48(c)(4) would clarify that the assignee required to

submit its written consent is only the existing assignee of the

original named inventors at the time the petition is filed and not any

party that would become an assignee based on the grant of the

inventorship correction. A citation to Sec. 3.73(b) would be presented.

Section 1.48(d) would be amended by addition of ``their part'' to

replace ``the part of the actual inventor or inventors'' and of

``omitted'' to replace ``actual'' to require statements from the

inventors to be added rather than from all the actual inventors so as

to comply with 35 U.S.C 116. Section 1.48(d)(1) would also be clarified

to identify the error to be addressed is the inventorship error. It is

not expected that the party filing a provisional application will

normally need to correct an error in inventorship under this paragraph

by adding an inventor therein except when necessary under Sec. 1.78 to

establish an overlap of inventorship with a continuing application.

Automatic correction of the inventorship is not possible as is the case

for nonprovisional applications when an executed oath or declaration

under Sec. 1.63 with the correct inventorship is later filed; since an

oath or declaration is not to be submitted in provisional applications,

Sec. 1.51(a)(2).

Section 1.48(d)(1) would be amended to remove the requirement that

the statement be verified in accordance with the proposed change to

Sec. 1.4(d)(2).

Section 1.48(e)(1) would be amended to replace a requirement in

provisional applications that the required statement be one ``of

facts'' directed towards ``establishing that the error'' being

corrected ``occurred without deceptive intention,'' thereby requiring

only a statement that the inventorship error occurred without deceptive

intent. Paragraph (e)(1) would also be amended to remove the

requirement that the statement be verified in accordance with the

proposed change to Sec. 1.4(d)(2). It is not expected that the party

filing a provisional application would need to file a petition under

this paragraph since the application will go abandoned by operation of

law, Sec. 1.53(e)(2), and the need to delete an inventor will not

affect the overlap of inventorship needed to claim priority under

Sec. 1.78(a)(3) for any continuing application.

Section 1.48(e)(3) would be amended to clarify that the assignee

required to submit its written consent is only the prior existing

assignee before correction of the inventorship is granted and not any

party that would become an assignee based on the grant of the

inventorship correction and a reference to Sec. 3.73(b) would be added.

Section 1.48(f) would be added to provide that the later filing of

an executed oath or declaration would act to correct the inventorship

without a specific petition for such correction and would be used to

issue a filing receipt and process the application notwithstanding any

inventorship or other identification name earlier presented.

Section 1.48(g) would be added to specifically recognize that the

Office may require such other information as may be deemed appropriate

under the particular circumstances surrounding a correction of the

inventorship.

Section 1.51(c) covering the use of an authorization to charge a

deposit account is proposed to be removed as unnecessary in view of

Sec. 1.25(b).

Section 1.52 paragraphs (a) and (d) would be amended to remove the

requirement that the translation be verified in accordance with the

proposed change to Sec. 1.4(d)(2). Paragraphs (a) and (d) of this

section would also be amended to clarify the need for a statement that

the translation being offered is an accurate translation, as is also

proposed in Sec. 1.69 paragraph (b).

Section 1.53(b)(1), as proposed, would remove: (1) The phrase ``in

the name of the actual inventor or inventors as required by

Sec. 1.41,'' and (2) the sentence ``[i]f all the names of the actual

inventor or inventors are not supplied when the specification and any

required drawing are filed, the application will not be given a filing

date earlier than the date upon which the names are supplied unless a

petition with the fee set forth in Sec. 1.17(i) is filed which sets

forth the reasons the delay in supplying the names should be excused.''

These proposed changes are consistent with the proposed change to

Sec. 1.41. Section 1.53(b)(1) (and Sec. 1.41(a)) would no longer

require that a patent be applied for in the name of the actual

inventors for an application for patent to receive a filing date.

Section 1.53(b)(1), as proposed, would change (1) ``[a]

continuation or

[[Page 49824]]

divisional application (filed under the conditions specified in 35

U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be filed under this

section, Sec. 1.60 or Sec. 1.62'' and (2) ``[a] continuation-in-part

application may also be filed under this section or Sec. 1.62'' to (1)

[a] continuation or divisional application (filed under the conditions

specified in 35 U.S.C. 120, 121 or 365(c) and Sec. 1.78(a)) may be

filed under this paragraph or paragraph (b)(3) of this section'' and

(2) ``[a] continuation-in-part application must be filed under this

paragraph, respectively. Upon the deletion of Secs. 1.60 and 1.62, any

continuation-in-part applications must be filed under Sec. 1.53(b)(1),

but a continuation or divisional application may be filed under

Secs. 1.53(b)(1) or (b)(3).

Section 1.53(b)(1), as proposed, would also add a new paragraph

(b)(1)(i) expressly providing that any continuation or divisional

application may be filed by all or by less than all of the inventors

named in a prior application, and that a newly executed oath or

declaration is not required pursuant to Secs. 1.51(a)(1)(ii) and

1.53(d) in a continuation or divisional application filed by all or by

less than all of the inventors named in a prior application, provided

that one of the following is submitted: (1) A copy of the executed oath

or declaration filed to complete (Sec. 1.51(a)(1)) the most immediate

prior national application for which priority is claimed under 35

U.S.C. 120, 121 or 365(c), or (2) a copy of an unexecuted oath or

declaration, and a statement that the copy is a true copy of the oath

or declaration that was subsequently executed and filed to complete

(Sec. 1.51(a)(1)) the most immediate prior national application for

which priority is claimed under 35 U.S.C. 120, 121 or 365(c). The

phrase ``most immediate prior national application'' is proposed rather

than ``prior application'' to accommodate those situations in which the

prior application was filed under current Secs. 1.60 or 1.62, or where

the prior application was itself a continuation or divisional

application and filed with a copy of the executed oath or declaration

from a prior application pursuant to Sec. 1.53(b)(1)(i). As is

currently the situation under Secs. 1.60 and 1.62, the applicant's duty

of candor and good faith including compliance with the duty of

disclosure requirements of Sec. 1.56 is continuous and applies to the

continuation, divisional or continued prosecution (Sec. 1.53(b)(3))

application, notwithstanding the lack of a newly executed oath or

declaration. Therefore, applicants should be informed of the intent to

file a continuation, divisional or continued prosecution application

with a copy of the proposed claimed supplied. New Sec. 1.53(b)(1)(i),

as proposed, would also reference Sec. 1.53(d) for the filing of a

continuation or divisional application without the concomitant

submission of a newly executed oath or declaration or a copy of the

oath or declaration for the most immediate prior national application

for which priority is claimed under 35 U.S.C. 120, 121 or 365(c).

Section 1.53(b)(1), as proposed, would also add a new paragraph

(b)(1)(i)(A) providing that the copy of the executed or unexecuted oath

or declaration for the most immediate prior national application for

which priority is claimed under 35 U.S.C. 120, 121 or 365(c) must be

accompanied by a statement from applicant, counsel for applicant or

other authorized party requesting the deletion of the names of the

person or persons who are not inventors in the continuation or

divisional application. Where the continuation or divisional

application and copy of the oath or declaration from the prior

application is filed without a statement from an authorized party

requesting deletion of the names of any person or persons named in the

prior application, the continuation or divisional application will be

treated as naming as inventors the person or persons named in the prior

application, taking into account any petition for correction of

inventorship pursuant to Sec. 1.48 in the prior application that has

been granted prior to the filing of the continuation or divisional

application. For situations where an inventor or inventors are to be

added in a continuation or divisional application see paragraph (ii)

under this section.

The statement requesting the deletion of the names of the person or

persons who are not inventors in the continuation or divisional

application must be signed by person(s) authorized pursuant to

Sec. 1.33(a) to sign an amendment in the continuation or divisional

application. That is, such a statement must be signed by: (1) All of

the inventors in the continuation or divisional application (see MPEP

714.01(a)), (2) the assignee of record of the entire interest in the

continuation or divisional application in compliance with Sec. 3.73(b)

(see MPEP 324), (3) an attorney or agent of record, or (4) a registered

attorney or agent acting in a representative capacity pursuant to

Sec. 1.34(a).

Section 1.53(b)(1)(i), as proposed, would add a new paragraph (B)

providing that where the power of attorney or correspondence address

was changed during the prosecution of the prior application, the change

in power of attorney or correspondence address must be identified in

the continuation or divisional application.

Section 1.53(b)(1), as proposed, would add a new paragraph (ii)

providing that a newly executed oath or declaration must be filed in a

continuation or divisional application naming an inventor not named in

the prior application. For situations where an inventor or inventors

are to be added in a continuation or divisional application the Office

will not require a petition pursuant to Sec. 1.48, but will require

only the newly executed oath or declaration naming the correct

inventorship in the continuation or divisional application under

Sec. 1.53. For deletion of inventors in a continuation or divisional

application see Sec. 1.53(b)(1)(i) and (b)(3). New Sec. 1.53(b)(1)(ii),

as proposed, would also provide that a newly executed oath or

declaration must be filed in a continuation-in-part application, which

application may name all, more, or less than all of the inventors named

in the prior application.

Section 1.53(b)(1)(iii), as proposed, would clarify that the

inventorship is not set forth in an application until an executed oath

or declaration is submitted therein in accordance with the proposed

change to Sec. 1.41(a). Where the inventorship was voluntarily set

forth on filing an application without an executed oath or declaration

pursuant to Sec. 1.53(d) for purposes of identification, the actual

inventorship of the application will be controlled by the later

submission of an executed oath or declaration which may change what was

originally identified as the inventorship without recourse to a

petition under Sec. 1.48 in accordance with the proposed change to

Sec. 1.41(a).

Section 1.53(b)(2), as proposed, would remove the phrase ``in the

name of the actual inventor or inventors as required by Sec. 1.41'' and

the sentence ``[i]f all the names of the actual inventor or inventors

are not supplied when the specification and any required drawing are

filed, the provisional application will not be given a filing date

earlier than the date upon which the names are supplied unless a

petition with the fee set forth in Sec. 1.17(q) is filed which sets

forth the reasons the delay in supplying the names should be excused.''

Section 1.53(b)(2) (and Sec. 1.41(a)) would no longer require that a

patent be applied for in the name of the actual inventors for an

application for patent to receive a filing date.

Section 1.53(b)(2)(ii), as proposed, would change the phrase

``treated as'' to ``converted to'' for clarity.

[[Page 49825]]

Section 1.53(b)(3) is proposed to be added to provide for the

filing of a continued prosecution application.

Section 532 of the Uruguay Round Agreement Act (Pub. L. 103-465,

section 532, 108 Stat. 4809 (1994)) amended 35 U.S.C. 154 to provide

that the term of patent protection begins on the date of patent grant

and ends on the date 20 years from the filing date of the application.

As any delay in the prosecution of the application will reduce the term

of patent protection, reducing unnecessary delays in the prosecution of

applications is a mutual interest of patent applicants and the Office.

An applicant in a nonprovisional application filed on or after June

8, 1995, must file a continuing application to obtain further

examination subsequent to a final rejection or other final action. The

current continuing practice under Secs. 1.60 and 1.62 of processing an

application filed thereunder with a new application number and filing

date delays the examination of such continuing applications. Therefore,

the Office proposes to eliminate this delay by: (1) Not assigning a new

application number to an application filed under Sec. 1.53(b) (3), and

(2) not processing the application filed under Sec. 1.53(b)(3) with a

filing date of the request for an application under Sec. 1.53(b)(3).

Rather, a continued prosecution application would retain the

application number and the filing date of the prior application to

which it relates for identification purposes thereby allowing

examination to proceed without the delays that would be caused by the

current need to assign to applications filed under Secs. 1.60 and 1.62

a new application number and filing date as of the date the Rule 60 or

62 application was requested (submitted).

Section 1.53(b)(3), as proposed, would specifically provide that:

(1) In a complete nonprovisional application (Sec. 1.51(a)(1)) filed on

or after June 8, 1995, a continuation or divisional application that

discloses and claims only subject matter disclosed in that prior

complete application and names as inventors the same or less than all

the inventors named in that prior complete application may be filed

under this paragraph, and (2) the filing date of the continued

prosecution application, such as for continuity purposes under 35

U.S.C. 120 and Sec. 1.78, is the date on which a request for an

application under this paragraph, including identification of the prior

application number is filed.

The specific reference to the prior application required by 35

U.S.C. 120 and Sec. 1.78(a)(2) will be satisfied by a sentence that the

continued prosecution application is a continuation or divisional, as

appropriate, of prior application number ##/###,###, filed ##/##/##,

now abandoned, notwithstanding that the so identified application

number and filing date are also the application number and filing date

assigned to the continued prosecution application under this paragraph.

Where the continued prosecution application derives from a chain of

Sec. 1.53(b)(3) applications assigned a common application number and

filing date, a sentence that the application is a continuation or

divisional, as appropriate, of the common application number and filing

date will constitute a specific reference (35 U.S.C. 120 and

Sec. 1.78(a)(2)) to each application assigned that application number

and filing date. Since Sec. 1.53(b)(3) is proposed to be limited to

continuations and divisionals, the actual filing date of the request

for an application under Sec. 1.53(b)(3) will be relevant only to the

copendency requirement of 35 U.S.C. 120 and Sec. 1.78 and patent term

vis-a-vis Pub. L. 103-465. Nevertheless, Sec. 1.53(b)(3) is proposed to

be limited to a continuation or divisional of a complete application

filed on or after June 8, 1995, so as to avoid any dispute as to

whether the application is subject to 20-year patent term as set forth

in Pub. L. 103-465. That is, any continuation or divisional of an

application filed prior to June 8, 1995, as well as any continuation-

in-part, must be filed under Sec. 1.53(b)(1).

Section 1.53(b)(3)(i)(A), as proposed, would provide that an

application under Sec. 1.53(b)(3) (a continued prosecution application)

will use the specification, drawings and oath or declaration from the

prior complete application and will be assigned its application number

for identification purposes.

Section 1.53(b)(3)(i)(B), as proposed, would provide that the

filing of a request for a continued prosecution application is a

request to expressly abandon the prior application as of the filing

date granted the application under Sec. 1.53(b)(3).

Section 1.53(b)(3)(i)(C), as proposed, would provide that a

continued prosecution application must be filed before the payment of

the issue fee, abandonment of, or termination of proceedings on the

prior application with the filing date of a request for a continued

prosecution application being the date on which a request for a

continued prosecution application including identification of the

application number of the prior complete application is filed.

Section 1.53(b)(3)(ii) (A) and (B), as proposed, would provide that

filing fee for a continued prosecution application is the statutory

basic filing fee as set forth in Sec. 1.16 and any additional fee due

based on the number of claims remaining in the application after entry

of any amendment accompanying the request for an application under this

section and entry of any amendments under Sec. 1.116 unentered in the

prior application which applicant has requested to be entered in the

new application.

In instances in which a continued prosecution application is

submitted without the basic statutory filing fee or any additional

claims fee due, the Office will continue to mail a ``Notice of Missing

Parts'' under Sec. 1.53(d)(1) and give the applicant a period of time

within which to file the fee and to pay the surcharge under

Sec. 1.16(e) to prevent abandonment of the application (see

Sec. 1.53(d)(1)). Thus, the filing of a continued prosecution

application without the basic statutory filing fee or any additional

claims fee due will result in a delay in the initial processing of the

application. An applicant, however, may eliminate or limit this delay

by either filing the request for a continued prosecution application

with the appropriate filing fee or not delaying the submission of the

appropriate filing fee until the mailing of or expiration of the period

for response to the ``Notice of Missing Parts.''

Section 1.53(b)(3)(iii), as proposed, would provide that if a

continued prosecution application is filed by less than all the

inventors named in the prior application, a statement must accompany

the application when filed requesting deletion of the names of the

person or persons who are not inventors of the invention being claimed

in the continued prosecution application. Where an application is filed

under Sec. 1.53(b)(3) without a statement requesting deletion of the

names of any person or persons named in the prior application, the

application will be treated as naming as inventors the person or

persons named in the prior application, taking into account any grant

of a petition correcting inventorship in the prior application pursuant

to Sec. 1.48. To correct the inventorship in the continued prosecution

application, the Office will not require a petition pursuant to

Sec. 1.48 as the application is to be filed without a newly executed

oath or declaration, but will require only a newly executed oath or

declaration naming the correct inventorship in the continued

[[Page 49826]]

prosecution application, which is similar to the requirements for

correction of the inventorship in applications filed under

Sec. 1.53(b)(1) without a newly executed oath or declaration.

Section 1.53(b)(3)(iv), as proposed, would require that any new

change be made in the form of an amendment to the prior application,

and would provide that any new specification filed with the request for

an application under Sec. 1.53(b)(3) would not be considered part of

the original application papers, but would be treated as a substitute

specification in accordance with Sec. 1.125. In the event that

legislation mandating the 18-month publication of patent applications

(e.g., H.R. 1733) is enacted, it will be necessary to amend proposed

Sec. 1.53(b)(3)(iii) to require a substitute specification in

compliance with Sec. 1.125 and drawings including only those changes to

the prior application during the prosecution of the prior application.

Section 1.53(b)(3)(v), as proposed, would provide that the filing

of a continued prosecution application 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 application filed under the provisions of

Sec. 1.53(b)(3) may be given similar access to, or similar information

concerning, the other application(s) in the file wrapper.

Section 1.53(b)(3)(vi) (A) through (D), as proposed, would provide

that the applicant is urged to furnish in the request for an

application under Sec. 1.53(b)(3) the following information relating to

the prior application to the best of his or her ability: (A) Title as

originally filed and as last amended, (B) name of applicant as

originally filed and as last amended, (C) current correspondence

address of applicant, and (D) identification of prior foreign

application and any priority claim under 35 U.S.C. 119.

Section 1.53(b)(3)(vii), as proposed, would provide that envelopes

containing only requests and fees for filing an application under

Sec. 1.53(b)(3) should be marked ``Box CPA.''

Section 1.53(c), as proposed, would replace its current language

with three paragraphs treating: (1) Applications found to be improper

or incomplete, (2) any requests for review of a notification that an

application has been found to be improper or incomplete, and (3)

termination of proceedings in an application for failure to timely

correct a filing error or seek review of a notification that an

application has been found to be improper or incomplete.

Section 1.53(c)(1), as proposed, would specifically provide that

``[i]f any application filed under paragraph (b) of this section is

found to be incomplete or improper, applicant will be so notified and

given a time period within which to correct the filing error.''

Section 1.53(c)(2), as proposed, would specifically provide that

``[a]ny request for review of a notification pursuant to paragraph

(c)(1) of this section, or a notification that the original application

papers lack a portion of the specification or drawing(s), must be by

way of a petition pursuant to this paragraph,'' ``[a]ny petition under

this paragraph must be accompanied by the fee set forth in Sec. 1.17(i)

in an application filed under paragraphs (b)(1) or (b)(3) of this

section, and the fee set forth in Sec. 1.17(q) in an application filed

under paragraph (b)(2) of this section,'' and ``[i]n the absence of a

timely (Sec. 1.181(f)) petition pursuant to this paragraph, the filing

date of an application in which the applicant was notified of a filing

error pursuant to paragraph (c)(1) of this section will be the date the

filing error is corrected.''

Section 1.53(c)(3), as proposed, would specifically provide that

``[i]f an applicant is notified of a filing error pursuant to paragraph

(c)(1) of this section, but fails to correct the filing error within

the given time period or otherwise timely (Sec. 1.181(f)) take action

pursuant to paragraph (c)(2) of this section, proceedings in the

application will be considered terminated'' and ``[w]here proceedings

in an application are terminated pursuant to this paragraph, the

application may be returned or otherwise disposed of, and any filing

fees, less the handling fee set forth in Sec. 1.21(n), will be

refunded.'' Section 1.53(c)(3), as proposed would not provide that

proceedings in the application will be considered terminated for

failure to timely respond to a notification that the original

application papers lack a portion of the specification or drawing(s).

Thus, the failure to timely seek review of a notification that the

original application papers lack a portion of the specification or

drawing(s) will not result in termination of proceedings in (or

abandonment of) the application, but will simply result in such portion

of the specification or drawing(s) not being considered part of the

original disclosure of the application.

Section 1.53(d)(1), as proposed, would change ``paragraph (b)(1) of

this section'' to ``paragraphs (b)(1) or (b)(3) of this section,'' such

that Sec. 1.53(d)(1) would be applicable to applications filed under

Secs. 1.53 (b)(1) and (b)(3), where Sec. 1.53(d)(2) would be applicable

to applications filed under Sec. 1.53(b)(2) (i.e., provisional

applications). While Sec. 1.53(d)(1) addresses both the filing fee and

the oath or declaration, the oath or declaration of an application

under Sec. 1.53(b)(3) will be the oath or declaration of the prior

complete (Sec. 1.51(a)(1)) application. As such, an oath or declaration

will not be required under Sec. 1.53(d)(1) for a proper application

under Sec. 1.53(b)(3).

Section 1.53(d)(1), as proposed, would be further amended to add

the phrases ``including a continuation, divisional, or continuation-in-

part application'' and ``pursuant to Secs. 1.63 or 1.175, which may be

a copy of the executed oath or declaration filed to complete

(Sec. 1.51(a)(1)) the most immediate prior national application for

which priority is claimed under 35 U.S.C. 120, 121 or 365(c), or a copy

of an unexecuted oath or declaration, and a statement that the copy is

a true copy of the oath or declaration that was subsequently executed

and filed to complete (Sec. 1.51(a)(1)) the most immediate prior

national application for which priority is claimed under 35 U.S.C. 120,

121 or 365(c), in a continuation or divisional application'' for

clarity and consistency with Sec. 1.53(b)(1). A reference to submission

of a copy of a Notice to File Missing Parts would be removed.

Section 1.54(b), as proposed, would add the phrase ``unless the

application is an application filed under Sec. 1.53(b)(3).'' To

minimize application processing delays in applications filed under

Sec. 1.53(b)(3), as proposed, such applications will not be processed

by the Office of Initial Patent Examination as new applications.

Section 1.55 paragraph (a) would be amended to remove the

requirement that the statement be verified in accordance with the

proposed change to Sec. 1.4(d)(2).

Section 1.59 would be amended: By revising the title to indicate

that expungement of information from an application file would come

under this section, by revising the existing paragraph and designating

it as paragraph (a)(1), and by adding paragraphs (a)(2), (b) and (c).

Paragraph (a)(1) would retain the general prohibition on the return of

information submitted in an application which has a filing date. The

portion of the paragraph relating to the Office furnishing copies of

application papers has been shifted to new paragraph (c). Paragraph

(a)(2) would make explicit that information, forming part of the

original disclosure, i.e., written

[[Page 49827]]

specification, drawings, claims and any preliminary amendment

specifically incorporated into an executed oath or declaration under

Secs. 1.63 and 1.175, will not be expunged from the application file.

Paragraph (b) of Sec. 1.59 would provide an exception to the

general prohibition of paragraph (a) on the expungement and return of

information and would allow for such when it is established to the

satisfaction of the Commissioner that the requested expungement and

return is appropriate.

Paragraph (b) of Sec. 1.59 is intended to cover the current

practice set forth in MPEP 724.05 where the submitted information has

initially been identified as trade secret, proprietary, and/or subject

to a protective order and where applicant may file a petition for its

expungement and return that will be granted upon a determination by the

examiner that the information is not material to patentability. Any

such petition should be submitted in response to an Office action

closing prosecution so that the examiner can make a determination of

materiality based on a closed record. Any petition submitted earlier

than close of prosecution may be returned unacted upon. In the event

pending legislation for pre-grant publication of applications, which

provides public access to the application file, is enacted, then the

timing of petition submissions under this section will be reconsidered.

A result of the proposed amendment to this section would be to have a

petition to expunge decided under the instant rule by the examiner who

determines the materiality of the information to be expunged rather

than by the Office of Petitions under Sec. 1.182, which prior to

rendering a decision on the petition consults with the examiner on

materiality of the information at issue.

Paragraph (b) of Sec. 1.59 is also intended to cover information

that was unintentionally submitted in an application, provided that:

(i) The Office can effect such return prior to the issuance of any

patent on the application in issue, (ii) that it is stated that the

information submitted was unintentionally submitted and the failure to

obtain its return would cause irreparable harm to the party who

submitted the information or to the party in interest on whose behalf

the information was submitted, (iii) the information has not otherwise

been made public, (iv) there is a commitment on the part of the

petitioner to retain such information for the period of any patent with

regard to which such information is submitted, and (v) it is

established to the satisfaction of the Commissioner that the

information to be returned is not material information under Sec. 1.56.

Requests to return information that have not been clearly identified as

information that may be later subject to such request by marking and

placement in a separate sealed envelope or container shall be treated

on a case-by-case basis. It should be noted that the Office intends to

start electronic scanning of all papers filed in an application, and

the practicality of expungement from the electronic file created by a

scanning procedure is not as yet determinable. Applicants should also

note that unidentified information that is a trade secret, proprietary,

or subject to a protective order that is submitted in an Information

Disclosure Statement may inadvertently be placed in an Office prior art

search file by the examiner due to the lack of such identification and

may not be retrievable.

Paragraph (b) of Sec. 1.59 is also intended to cover the situation

where an unintended heading has been placed on papers so that they are

present in an incorrect application file. In such situation, a petition

should request return of the papers rather than transfer of the papers

to the correct application file. The grant of such a petition will be

governed by the factors enumerated above in regard to the unintentional

submission of information. Where the Office can determine the correct

application file that the papers were actually intended for, based on

identifying information in the heading of the papers, e.g., Application

number, filing date, title of invention and inventor(s) name(s), the

Office will transfer the papers to the correct application file for

which they were intended without need of a petition.

Added paragraph (c) of Sec. 1.59 retains the practice that copies

of application papers will be furnished by the Office upon request and

payment of the cost for supplying such copies.

Section 1.60 is proposed to be removed and reserved.

In the notice of proposed rulemaking entitled ``Changes to

Implement 20-Year Patent Term and Provisional Application'' (20-Year

Term Notice of Proposed Rulemaking) published in the Federal Register

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

Office Official Gazette at 1170 Off. Gaz. Pat. Office 377 (January 3,

1995), Sec. 1.60 was proposed to be removed due to the rule change to

Sec. 1.4(d), which permits the filing of a copy of an oath or

declaration. The proposed removal of Sec. 1.60 in the 20-Year Term

Notice of Proposed Rulemaking, however, was withdrawn in the final rule

to permit further study.

A continuation or divisional application may be filed under 35

U.S.C. 111(a) using the procedures set forth in Sec. 1.53, by providing

a copy of the prior application, including a copy of the oath or

declaration in such prior application, as filed. The patent statutes

and rules of practice do not require that an oath or declaration

include a recent date of execution, and the Examining Corps has been

directed not to object to an oath or declaration as lacking either a

recent date of execution or any date of execution. This change in

examining practice will appear in the next revision of the MPEP. As

discussed supra, the applicant's duty of candor and good faith

including compliance with the duty of disclosure requirements of

Sec. 1.56 is continuous and applies to the continuing application.

Sections 1.60(b)(4) and 1.62(a) currently permit the filing of a

continuation or divisional application by all or by less than all of

the inventors named in a prior application without a newly executed

oath or declaration. To continue this practice, Sec. 1.53 is proposed

to be amended to provide that any continuation or divisional

application may be filed by all or by less than all of the inventors

named in a prior application, but where a newly executed oath or

declaration is not submitted for a continuation or divisional

application filed by less than all the inventors named in the prior

application, the copy of the oath or declaration for the most immediate

prior national application for which priority is claimed under 35

U.S.C. 120, 121 or 365(c) must be accompanied by a statement requesting

the deletion of the names of the person or persons who are not

inventors in the continuation or divisional application. A newly

executed oath or declaration will continue to be required in a

continuation or divisional application naming an inventor not named in

the prior application, or a continuation-in-part application.

Section 1.60 is now unnecessary due to: (1) The rule change to

Sec. 1.4(d), (2) the proposed addition of Sec. 1.53(b)(1)(i) to

expressly permit the filing of either a newly executed oath or

declaration, or a copy of the executed oath or declaration filed to

complete pursuant to Sec. 1.51(a)(1) the most immediate prior national

application for which priority is claimed under 35 U.S.C. 120, 121 or

365(c), in a continuation or divisional application, (3) the proposed

addition of Sec. 1.53(b)(1)(i) to permit the filing of a continuation

or divisional application by all or by less than all the inventors

[[Page 49828]]

named in a prior application, using a copy of the executed oath or

declaration filed to complete the prior application, and (4) the

proposed addition of Sec. 1.53(b)(3) to permit the filing of a

continued prosecution application.

A new application containing a copy of an oath or declaration under

Sec. 1.63 referring to an attached specification is indistinguishable

from a continuation or divisional application containing a copy of an

oath or declaration from a prior application submitted pursuant to

Sec. 1.53(b)(1)(i), as proposed. Unless an application is submitted

with a statement that the application is a continuation or divisional

application (Sec. 1.78(a)(2)), the Office will process such a new

application without requiring a new oath or declaration. Applicants are

advised to clearly designate any continuation or divisional application

as such to avoid the issuance of a filing receipt that does not

indicate that the application is a continuation or division.

Section 1.62 is proposed to be removed and reserved.

In the proposed rulemaking entitled ``Changes to Implement 18-Month

Publication of Patent Applications'' (18-Month Publication 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 at 1177 Off. Gaz. Pat. Office 61 (August 15, 1995),

Sec. 1.62(e) was proposed to be amended to require a substitute

specification in compliance with Sec. 1.125 and drawings where the

application filed under Sec. 1.62 is a continuation-in-part

application. The 18-Month Publication Notice of Proposed Rulemaking

proposed to digital image and/or optical character recognition (OCR)

scan application material into an electronic data base, which data base

would be used to publish the application (e.g., for producing copies of

the technical contents of the application-as-filed). The 18-Month

Publication Notice of Proposed Rulemaking indicated that as

applications filed prior to the implementation of 18-month publication

will not have been image- or OCR-scanned into the electronic data base,

the technical contents of an application filed under Sec. 1.62 in which

the prior application was itself filed prior to the implementation of

18-month publication will not be contained in the electronic data base.

The solution proposed in the 18-Month Publication Notice of

Proposed Rulemaking was for the Office to obtain the microfiche copy of

the prior application for applications under Sec. 1.62 which do not add

additional disclosure (i.e., continuation or divisional applications)

and image or OCR scan it into the electronic data base, and to amend

Sec. 1.62 to provide that, where the application adds additional

disclosure (i.e., is a continuation-in-part application), a substitute

specification in compliance with Sec. 1.125 and drawings will be

required.

The proposal in the 18-Month Publication Notice of Proposed

Rulemaking to obtain the microfiche copy of prior continuation or

divisional applications is now considered unfeasible. A number of

applications filed under Sec. 1.62 derive from a chain of applications

filed under Sec. 1.62. The information pertaining to such an

application's chain of prior applications contained within the Patent

Application Location and Monitoring (PALM) system is not sufficiently

comprehensive to readily and reliably indicate the prior application

that contains a specification and drawings, and is not sufficiently

reliable to avoid the occasional inclusion of an unrelated application

in the chain of prior applications. This could result in the

inadvertent publication of the specification and drawings of the wrong

application.

In addition, the microfiche copy of the prior application may be a

microfiche of sheets of specification and/or drawings on 8\1/2\ by 14-

inch paper, which paper size is not technically useable by the

equipment which will be employed for pre-grant publication of patent

applications. Attempts to reduce such sheets of specification and/or

drawings to a paper size processible by pre-grant publication equipment

results in electronic files which contain illegible text and figures.

Moreover, the microfilming process under pre-grant publication differs

from the previous microfilming process, and as such, the microfiche

copy of such a prior application is sufficiently dissimilar from the

microfiche copy of an application under pre-grant publication that it

causes accurate technical date capture difficulties.

In the event that legislation mandating the 18-month publication of

patent application is enacted, it will be necessary to require a

substitute specification in compliance with Sec. 1.125 and drawings

including any changes to the prior application during the prosecution

of the prior application or pursuant to Sec. 1.62(e) to continue

Sec. 1.62 practice.

Section 1.62 is now unnecessary due to: (1) The rule change to

Sec. 1.4(d), (2) the proposed change to Sec. 1.53(b)(1) to expressly

permit the filing of either a newly executed oath or declaration, or a

copy of the executed oath or declaration filed to complete pursuant to

Sec. 1.51(a)(1) the most immediate prior national application for which

priority is claimed under 35 U.S.C. 120, 121 or 365(c), in a

continuation or divisional application, (3) the proposed change to

Sec. 1.53(b)(1) to permit the filing of a continuation or divisional

application by all or by less than all the inventors named in a prior

application, using a copy of the executed oath or declaration filed to

complete the prior application, and (4) the proposed addition of

Sec. 1.53(b)(3) to permit the filing of a continued prosecution

application.

The Office currently receives a number of petitions requesting that

an application filed under Secs. 1.60 and 1.62 be accepted even though

at the time of filing of the application, the application did not

comply with all the requirements of Secs. 1.60 or 1.62 due to

inadvertent error on the part of the applicant. The examination of

these improper applications under Secs. 1.60 and 1.62 is delayed until

a petition to accept the application is filed and granted. The large

majority of the applications filed under Sec. 1.60, however, complied

at the time of filing with the requirements of Sec. 1.53(b)(1), and the

copy of the oath or declaration from the prior application is now

acceptable as the oath or declaration for the application, regardless

of whether the application is an application under Sec. 1.53 or

Sec. 1.60. The removal of Sec. 1.60 and simplification of Sec. 1.62

will reduce the number of these types of petitions and will simplify

the procedures for filing an application for both the Office and patent

practitioners.

It is anticipated that, subsequent to the removal of Secs. 1.60 and

1.62, applications purporting to be applications filed under Secs. 1.60

or 1.62 will be filed until the deletion of Secs. 1.60 and 1.62 become

well known among patent practitioners. Applications purporting to be an

application filed under Sec. 1.60 will simply be treated as a new

application filed under Sec. 1.53 (i.e., the reference to Sec. 1.60

will simply be ignored).

Applications purporting to be an application filed under Sec. 1.62

will be treated as continued prosecution applications under

Sec. 1.53(b)(3), and those applications that do not meet the

requirements of Sec. 1.53(b)(3) (e.g., continuation-in-part

applications or continuations or divisional of applications filed

before June 8, 1995) will be treated as improper continued prosecution

applications under Sec. 1.53(b)(3). Such improper applications under

Sec. 1.53(b)(3) may be corrected by

[[Page 49829]]

way of petition under Sec. 1.53(b)(c) (and $130 fee pursuant to

Sec. 1.17(i)).

Such a Sec. 1.53(c) petition in a continuation or divisional

application will be granted on the condition that the applicant file:

(1) The $130 petition fee, and (2) a true copy of the complete

application designated as the prior application in the purported

Sec. 1.62 application papers as filed, or, if the prior application was

an application filed under Sec. 1.62, a true copy of its most immediate

parent application which contained a specification and drawings as

filed. Such a Sec. 1.53(c) petition in a continuation-in-part

application will be granted on condition that the applicant file: (1)

The $130 petition fee, and (2) a true copy of the complete application

designated as the prior application in the purported Sec. 1.62

application papers as filed, or, if the prior application was an

application filed under Sec. 1.62, a true copy of its most immediate

parent application which contained a specification and drawings as

filed, and any amendments submitted during the prosecution of the prior

application.

Section 1.63(a)(3) is proposed to be amended by requiring the post

office address to appear in the oath or declaration and having the

requirement from Sec. 1.41(a) for the full names of the inventors

placed therein.

Section 1.69, paragraph (b), would be amended to remove the

requirement that the translation be verified in accordance with the

proposed change to Sec. 1.4(d)(2). Paragraph (b) of this section is

also being amended to clarify the need for a statement that the

translation being offered is an accurate translation, as is proposed

for Sec. 1.52, paragraph (a) and (d).

Section 1.78(a)(1)(ii), as proposed, would remove the references to

Secs. 1.60 and 62 in view of the proposed deletion of Secs. 1.60 and

62.

Section 1.84, paragraph (b), is proposed to be amended by removing

references to the filing of black and white photographs in design

applications as unnecessary in view of the reference in Sec. 1.152 to

Sec. 1.84(b).

Section 1.91 is proposed to be amended for clarification purposes

by additionally reciting ``Exhibits'' as well as models. The section is

proposed to be amended to state that a model, working model or other

physical exhibit may be required by the Office if deemed necessary for

any purpose in examination of the application. This language is moved

from Sec. 1.92.

Section 1.92 is proposed to be removed and reserved and the

language, as stated above, transferred to Sec. 1.91 for improved

contextual purposes.

Section 1.97 (c) through (e) are proposed to be amended by

replacement of ``certification'' by ``statement,'' see comments

relating to Sec. 1.4(d), and by clarifying the current use of

``statement'' by the terms ``information disclosure.'' Section

1.97(e)(2) is further amended to replace ``or'' by ``and'' to require

that: No item of information contained in the information disclosure

statement was cited in a communication from a foreign patent office in

a counterpart foreign application and that no item of information

contained in the information disclosure statement to the knowledge of

the person signing the statement, after making reasonable inquiry, was

known to any individual designated in Sec. 1.56(c) more than three

months prior to the filing of the information disclosure statement. The

use of ``and'' rather than ``or'' is in keeping with the intent of the

rule as expressed in the MPEP 609, page 600-91, that the conjunction be

conjunctive rather than disjunctive. The mere absence of an item of

information from a foreign patent office communication was clearly not

intended to represent an opportunity to delay the submission of the

item when known more than three months prior to the filing of an

information disclosure statement to an individual having a duty of

disclosure under Sec. 1.56.

Section 1.101 is proposed to be removed and reserved as relating to

internal Office instructions.

Section 1.102, paragraph (a), would be amended to remove the

requirement that the showing be verified in accordance with the

proposed change to Sec. 1.4(d)(2).

Section 1.103, paragraph (a), would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.104 is proposed to be removed and reserved as relating to

internal Office instructions (the material of paragraph (c) would be

present in the MPEP).

Section 1.105 is proposed to be removed and reserved as relating to

internal Office instructions.

Section 1.108 is proposed to be removed and reserved as relating to

internal Office instructions.

Section 1.111(b) is proposed to be amended to explicitly recognize

that a reply must be reduced to a writing which must point out the

specific distinctions believed to render the claims, including any

newly presented claims, patentable. It is noted that an examiner's

amendment reducing a telephone interview to writing would comply with

Sec. 1.2.

In Sec. 1.112 it is proposed to remove as being unnecessary the

statement that ``any amendments after a second Office action must

ordinarily be restricted to the rejection, objections or requirements

made in the office action'' to reflect actual practice wherein an

unrestricted right of entry exists prior to a final rejection and that

an application or patent under reexamination be considered repeatedly

unless a final action is rendered. It is proposed to amend the section

for clarification purposes by addition of a reference to

reconsideration ``before final action.''

Section 1.113(a), as proposed, would add ``by the examiner'' after

``examination or consideration,'' change ``objections to form'' to

``objections as to form'' for clarity, and would replace ``response''

with ``reply'' in accordance with the proposed change to Sec. 1.111.

Section 1.113(b), as proposed, would change ``clearly stating the

reasons therefor'' to ``clearly stating the reasons in support

thereof'' for clarity.

A new Sec. 1.113(c) would be added to provide that the first action

in an application will not be made final. See comments to Secs. 1.116

and 1.191.

Section 1.115 is proposed to be replaced by new Sec. 1.115 that

would contain material to be deleted from Secs. 1.117 through 1.119,

1.123 and 1.124. No change in substance is contemplated with the

material of deleted sections being rearranged and edited for clarity

and contextual purposes in the new section. The reference to

``application'' is intended to include reissue applications.

Section 1.116(a), as proposed, would limit amendments after a final

rejection or other final action (Sec. 1.113) to those amendments

cancelling claims or complying with any requirement of form set forth

in a previous Office action, and would replace the phrase ``any

proceedings relative thereto'' with ``any related proceedings'' for

clarity.

Section 1.116(b), as proposed, would provide that any amendment not

in compliance with Sec. 1.116(a) must be submitted with a request for

an application under Sec. 1.53(b)(3) to ensure consideration of the

amendment.

Under Sec. 1.116, as proposed, amendments after final rejection or

other final action would be limited to cancelling claims or complying

with any requirement of form expressly set forth in a previous Office

action. Currently, amendments after final which concern the merits of

an application may, upon a showing of good and sufficient reasons why

they are necessary and were not earlier presented, be entered and

amendments after final which present rejected claims

[[Page 49830]]

in better form for consideration on appeal may be entered. This

procedure causes delays in the ultimate issuance of the application as

a patent, since applicants will await a ruling on whether such

amendment will be entered prior to deciding whether to obtain the entry

of such amendment through the filing of a continuing application. In

addition, the expedited handling of numerous amendments after final,

and the expedited consideration of whether there is an adequate showing

of good and sufficient reasons why an amendment after final concerning

the merits of an application is necessary and not earlier presented, or

whether an amendment after final presents rejected claims in better

form for consideration on appeal, places a significant burden on Office

resources.

Section 1.113(c), as proposed, would eliminate first action final

practice, and, as such, would eliminate the necessity to submit an

amendment after final simply to avoid a first action final in a

continuing application. In view of this safeguard, and the delay and

burden of the current practice for the treatment of amendments after

final, Sec. 1.116 is proposed to be amended to limit those amendments

that may be presented as a matter of right after a final rejection or

other final action. Put simply, the proposed elimination of first

action final practice by the Office is the quid pro quo for the

proposed strict limitation of after final practice. Persons submitting

comments objecting to this proposed limitation of after final practice

should frame such comments in the context that the proposed elimination

of first action final practice by the Office is coupled to the proposed

limitation of after final practice.

Section 1.116, as proposed, would not affect the authority of an

examiner to enter in an application under final an amendment that

places the application in condition for allowance, but does not

strictly meet the requirements of Sec. 1.116(a). That is, in instances

in which the applicant and examiner agree on an amendment that would

place the application in condition for allowance, the examiner would

retain the authority to enter the amendment, notwithstanding the

requirements of Sec. 1.116(a). Where, however, the applicant and the

examiner do not agree on whether an amendment would place an

application in condition for allowance, and the amendment does not meet

the requirements of Sec. 1.116(a), the applicant could not require the

examiner to consider the amendment as a matter of right.

Section 1.117 is proposed to be removed and reserved as the subject

matter was transferred to proposed Sec. 1.115.

Section 1.118 is proposed to be removed and reserved and its

subject matter transferred to proposed Sec. 1.115.

Section 1.119 is proposed to be removed and reserved and its

subject matter transferred to proposed Sec. 1.115.

Section 1.121 paragraphs (a) through (f) are proposed to be

replaced with paragraphs (a) through (c), which separately treat

amendments in non-reissue applications (paragraph (a)), amendments in

reissue applications (paragraph (b)) and amendments in reexamination

proceedings (paragraph (c)). Paragraphs (a) and (b) each separately

treat amendment of the specification (paragraphs (a)(1) and (b)(1)) and

of the claims (paragraphs (a)(2) and (b)(2)). In comparing amendment

practice to the specificat'ion for non-reissue and reissue

applications: When making an amendment to the specification of a non-

reissue application a copy of all previous amendments would not be

required, whereas for reissue applications a copy of all previous

amendments to the patent specification would be required. In comparing

amendment practice to the claims for non-reissue and reissue

applications: When making an amendment to the claims of a non-reissue

application or when new claims are added, a copy of all pending claims,

including original claims that have never been amended, would be

required, whereas for reissue applications a copy of only claims that

are being amended or added would be required.

Paragraph (a) of Sec. 1.121 would relate to amendments in non-

reissue applications and retains a reference to Sec. 1.52. Paragraph

(a)(1) would relate to the manner of making amendments in the

specification other than in the claims. Paragraph (a)(1)(i) would

require the precise point to be indicated where an amendment is made.

Paragraph (a)(1)(ii) would allow amendments that are deletions only to

be done by a direction to cancel rather than presenting the

sentence(s), paragraph(s) and/or page(s) with brackets. This should be

compared to cancellation of material from the patent specification in a

reissue application (paragraph (b)((1)((ii)) or in a reexamination

proceedings (Sec. 1.530(d)(1)(ii)--by way of a copy of the rewritten

material). Paragraph (a)(1)(iii) would require all other amendments,

such as additions or deletions mixed with additions, to be made by

submission of a copy of the rewritten sentence(s), paragraph(s) and/or

page(s) to permit the examiner to more readily recognize the changes

that are being made. Current practice does not require the marking of

an amendment to the specification in non-reissue applications. A change

in one sentence, paragraph or page that results in only format changes

to other pages not being amended are not to be submitted. Paragraph

(a)(1)(iv) would identify the type of markings required by paragraph

(a)(1)(iii), single underlining for added material and single brackets

for material deleted. The marking would also be required to be applied

in reference to the material as previously rewritten and not as

originally presented if that differed from the previous presentation.

Paragraph (a)(2) of Sec. 1.121 would relate to the manner of making

amendments in the claims of a non-reissue application. Paragraph

(a)(2)(i)(A) would permit cancellation of a claim by a direction to do

so or by simply omitting a copy of the claim when a complete copy of

all pending claims are presented pursuant to paragraph (a)(2)(ii) of

this section. Paragraph (a)(2)(i)(B) would permit amendment of a

previously submitted claim, other than mere cancellation by submission

of a copy of the claim completely rewritten with markings pursuant to

paragraph (a)(2)(iii) of this section rather than continuing to permit

requests that the Office hand-enter changes of five or less words,

Sec. 1.121(c)(2). Such rewriting would be construed as a direction that

the rewritten claim be a replacement for the previously submitted

claim. Paragraph (a)(2)(i)(C) sets forth that a new claim may only be

added by the submission of a clean copy of the new claim.

Paragraph (a)(2)(ii) of Sec. 1.121 would require that when a

previously submitted claim is amended, or when a new claim is added,

applicant must submit a separate copy of all pending claims to include

all newly rewritten claims, all newly added claims, all previously

rewritten claims that are still pending and any unamended claims that

are still pending. This would enable the examiner to more quickly

identify the claims that must be reviewed for the next Office action

and would enable the printer to have a current version of the allowed

claims for printing should the application be allowed. Compare with

amendment of claims in reissue applications wherein only a copy of an

amended patent claim or added claim is required, paragraph (b)(2)(i)(A)

of this section, but not of previous claims (patent and added claims)

that are not currently being amended. Current practice does not require

a complete copy of all pending claims but only those claims being

amended or added.

[[Page 49831]]

Paragraph (a)(2)(iii) of Sec. 1.121 would identify the type of

marking required by paragraph (a)(2)(i)(B), single underlining for

added material and single brackets for material deleted.

Paragraph (a)(2)(iv) of Sec. 1.121 would provide that the failure

to submit a copy of any previously submitted claim would be construed

as a direction to cancel that claim.

Paragraph (a)(3) of Sec. 1.121 would clarify that amendments to the

original application drawings for non-reissue applications are not

permitted and are to be made by way of a substitute sheet for each

original drawing sheet that is to be amended.

Paragraph (a)(4) of Sec. 1.121 would require that any amendment

presented in a substitute specification must be presented under the

provision of this section either prior to or concurrent with the

submission of the substitute specification.

Paragraph (b) of Sec. 1.121 would apply to amendments in reissue

applications. Paragraph (b)(1) of Sec. 1.121 would relate to the manner

of making amendments to the specification other than in the claims in

reissue applications. Paragraph (b)(1)(i) would require the precise

point to be indicated where an amendment is made. Paragraph (b)(1)(ii)

would require that all amendments including deletions be made by

submission of a copy of the rewritten paragraph(s) with markings. A

change in one sentence, paragraph or page that results in only format

changes to other pages not being amended are not to be submitted.

Compare to amendments to the specification other than in the claims of

non-reissue applications wherein deletions are permitted, paragraph

(a)(1)(ii) of this section. Paragraph (b)(1)(iii) sets forth that each

amendment to the specification must include all amendments to the

specification relative to the patent as of the date of the submission.

Compare to amendments to the specification other than claims in

nonreissue applications wherein previous amendments to the

specification are not required to accompany the current amendment to

the specification, paragraph (a)(1)(iii). Paragraph (b)(1)(iv) would

define the marking set forth in paragraph (b)(1)(ii) of section.

Paragraph (b)(2) of Sec. 1.121 would relate to the manner of making

amendments to the claims in reissue applications. Paragraph

(b)(2)(i)(A) of Sec. 1.121 would require the entire text of each patent

claim that is being amended and of each added claim rather than

continuing to permit requests that the Office hand-enter changes of

five or less words, Sec. 1.121(c)(2), but not of all pending claims,

such as patent claims that have not been amended. Compare paragraph

(a)(2)((ii). Additionally, provision would be made for the cancellation

of a patent claim by a direction to cancel without the need for marking

by brackets. Paragraph (b)(2)(i)(B) would require that patent claims

not be renumbered. Paragraph (b)(2)(i)(C) would identify the type of

marking required by paragraph (b)(2)(i)(A), single underlining for

added material and single brackets for material deleted.

Paragraph (b)(2)(ii) of Sec. 1.121 would require that each

amendment submission set forth the status of all patent claims and all

added claims as of the date of the submission, as not all claims (non-

amended claims) are to be presented with each submission, paragraph

(b)(2)(iv). The absence of submission of the claim status would result

in an incomplete response, 35 U.S.C. 135.

Paragraph (b)(2)(iii) of Sec. 1.121 would require that each claim

amendment be accompanied by an explanation of the support in the

disclosure of the patent for the amendment. The absence of an

explanation would result in an incomplete response, 35 U.S.C. 135.

Paragraph (b)(2)(iv) of Sec. 1.121 would require that each

submission of an amendment to any claim (patent claim or added claim)

requires copies of all amendments to the claims as of the date of the

submission. A copy of a previous amendment would not meet the

requirement of this section in that all amendments must be represented,

as only the last amendment will be used for printing.

Paragraph (b)(2)(v) of Sec. 1.121 would provide that the failure to

submit a copy of any added claim would be construed as a direction to

cancel that claim.

Paragraph (b)(2)(vi) of Sec. 1.121 would clarify that: (1) No

reissue patent would be granted enlarging the scope of the claims

unless applied for within two years from the grant of the original

patent (additional broadening outside the two-year limit is appropriate

as long as some broadening occurred within the two-year period), and

(2) no amendment may introduce new matter or be made in an expired

patent.

Paragraph (b)(3) of Sec. 1.121 clarify that amendments to the

patent drawings are not permitted and that any change must be by way of

a new sheet of drawings with the amended figures being identified as

``amended'' and with added figures identified as ``new'' for each sheet

that has changed.

Paragraph (c) of Sec. 1.121 would clarify that amendments in

reexamination proceedings are to be made in accordance with Sec. 1.530.

Section 1.121 as applied both to non-reissue and reissue

applications does not provide for replacement pages whereby a new page

would be physically substituted for a currently existing page. However,

an applicant can direct that Page ______ be cancelled and the following

inserted in its place. The wide availability of word processing should

enable applicants to more easily submit updated material providing

greater accuracy and thereby eliminating the need for the Office to

hand-enter amendments. To that end, Sec. 1.125 is proposed to be

amended to provide that a substitute specification may be submitted at

any point up to payment of the issue fee as a matter of right.

The proposed changes to Sec. 1.121 relate in part to the method of

presenting amendments in reissue and reexamination proceedings, that

would more closely parallel each other. The Office seeks guidance on

the usefulness of bringing reissue and reexamination proceedings in

closer harmony. Currently, both practitioners and Office personnel must

retain a working knowledge of these infrequently used but vital avenues

for review of an issued patent. The Office has identified the following

areas for possible harmonization and would like comments as to the

appropriateness of these areas, identification of other suitable areas

for consideration and specific means to achieve harmonization in the

identified areas, e.g., whether a concept or practice in one area

should be applied to the other area or a new practice for both should

be started:

--Procedures for amending claims and the specification, Sec. 1.121

--To utilize a reissue certificate (similar to a reexamination

certificate) attached to a copy of the original patent as the reissued

patent. This procedure would eliminate the need to reprint the entire

reissued patent.

--Whether the special dispatch provisions of re-examination should be

applied to reissue applications.

Section 1.122 is proposed to be removed and reserved as

representing internal Office instruction.

Section 1.123 is proposed to be removed and reserved and its

subject matter transferred to proposed Sec. 1.115 for better context.

Section 1.124 is proposed to be removed and reserved and its

subject matter transferred to proposed Sec. 1.115 for better context.

Section 1.125 is proposed to be amended by addition of paragraphs

(a)

[[Page 49832]]

through (d). Paragraph (a) would retain the current practice that a

substitute specification may be required by the examiner and would be

clarified to note that if the legibility of the application papers

shall render it difficult to consider the case, the Office may require

a substitute specification.

Paragraph (b) of Sec. 1.125 would provide for the right of filing a

substitute specification in an application other than a reissue

application, at any point up to payment of the issue fee, if it is

accompanied by a statement that the substitute specification includes

no new matter and does not introduce any amendments unless they have

been submitted in accordance with the requirements of Sec. 1.121(a)

either prior to or concurrent with the submission of the substitute

specification. In view of the proposed continued prosecution

application under Sec. 1.53(b)(3) and the need to submit sentence,

paragraph, and/or page changes under Sec. 1.121(a), liberalization of

the substitute specification requirements is desirable. The requirement

for a lack of new matter statement being verified would be deleted. See

comments to Sec. 1.4(d).

Paragraph (c) of Sec. 1.125 would clarify that a substitute

specification is to be submitted without markings as to amended

material.

Paragraph (d) of Sec. 1.125 would not permit a substitute

specification in reissue or reexamination proceedings as markings for

changes from the patent are required therein.

Section 1.133, paragraph (b), would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.134 would be amended by replacement of ``response'' with

``reply'' in accordance with the proposed change to Sec. 1.111.

Section 1.135, paragraphs (a) and (c), would be amended by

replacement of ``response'' with ``reply'' in accordance with the

proposed change to Sec. 1.111. Paragraph (b) is proposed to be amended

to clarify that the admission of or refusal to admit any amendment

after final rejection, and not just an amendment not responsive to the

last Office action, shall not operate to save the application from

abandonment.

Section 1.135, paragraph (c), is proposed to be amended to provide

that a new ``time period'' under Sec. 1.134 may be given if a reply to

a non-final Office action is substantially complete but consideration

of some matter or compliance with some requirement has been

inadvertently omitted. This would replace the current practice whereby

applicant may be given an opportunity to supply the omission through

the setting of a ``time limit'' of one month that is not currently

extendable. Generally, a new one month shortened statutory time period

would be utilized enabling an applicant to petition for extensions of

time under Sec. 1.136(a). Where 35 U.S.C. 133 requires a period longer

than one month, i.e., actions mailed in the month of February, a

shortened statutory period of 30 days will be set. The setting of a

time period for reply under Sec. 1.134 rather than a time limit would

result in the date of abandonment (when no further reply is filed)

being the expiration of the new time period rather than, at present,

the date of expiration of the period of reply set in the original

Office action for which an incomplete reply was filed. Thus, the

proposed amendment to paragraph (c) of Sec. 1.135 would permit the

refiling of a continuing application as an alternative to completing

the reply, whereas the current rule only permits an applicant to

complete the reply that was held to be incomplete.

Section 1.135, paragraph (c), is also proposed to be amended to

remove an unnecessary reference to consideration of the question of

abandonment and to clarify that the reply for which applicant may be

given a new time period to reply to must be a ``non-final'' Office

action.

Section 1.136, paragraph (a)(1), is proposed to be amended to

recite the availability of a maximum of five (5) rather than four (4)

months as an extension of time when only a one (1) month or 30 day

shortened statutory period or a non-statutory period for reply is set.

Paragraph (a)(1) is would also be amended by replacement of ``respond''

with ``reply'' in accordance with the proposed change to Sec. 1.111.

Section 1.136, paragraph (a)(2), would be amended by replacement of

``respond'' with ``reply'' in accordance with the proposed change to

Sec. 1.111 and other clarification changes.

Section 1.136 is proposed to be amended by addition of paragraph

(a)(3) that would now provide for the filing in an application a

general authorization to treat any reply requiring a petition for an

extension of time for its timely submission as containing a request

therefor for the appropriate length of time. The authorization may be

filed at any time prior to or with the submission of a reply that would

require an extension of time for its timely submission, including

submission with the application papers. Currently, the mere presence of

a general authorization, submitted prior to or with a reply requiring

an extension of time, to charge all required fees does not amount to a

petition for an extension of time for that reply (MPEP 201.06 and

714.17) and under the proposed amended rule the submission of a reply

requiring an extension of time for its timely submission would not be

treated as an inherent petition for an extension of time absent an

authorization for all necessary extensions of time. The Office will

continue to treat all petitions for an extension of time as requesting

the appropriate extension period notwithstanding an inadvertent

reference to a shorter period for extension and will liberally

interpret comparable papers as petitions for an extension of time.

Applicants are advised to file general authorizations for payment of

fees and petitions for extensions of times as separate papers rather

than as sentences buried in papers directed to other matters (such as

an application transmittal letter). The use of individual papers

directed only to an extension of time or to a general authorization for

payment of fees would permit the Office to more readily identify the

presence of such items and list them individually on the application

file jacket thereby providing ready future identification of these

authorizations.

Clarifying language is proposed for Sec. 1.136(a)(3) to reflect

current practice that general authorizations to charge fees are

effective to meet the requirement for the extension of time fee for

responses filed concurrent or subsequent to the authorization. However,

a general authorization to charge additional fees does not represent a

petition for an extension of time, which petition must be separately

requested.

Section 1.137 is proposed to be amended by moving language

presently codified, elsewhere to, inter alia, incorporate revival of

abandoned applications and lapsed patents for the failure: (1) To

timely reply to an Office requirement in a provisional application

(Sec. 1.139), (2) to timely pay the issue fee for a design application

(Sec. 1.155 paragraphs (b)-(f)), (3) to timely pay the issue fee for a

utility or plant application (Sec. 1.316 paragraphs (b)-(f)), or to

timely pay the full amount of the issue fee (Sec. 1.317 paragraphs (b)-

(f)) (lapsed patents). Cites in parentheses reference where subject

matter is contained in current rules.

Section 1.137(a), as proposed, would further move into paragraph

(a)(3) the requirement that a petition thereunder be ``promptly filed

after the applicant is notified of, or otherwise becomes aware of, the

abandonment.'' 35 U.S.C. 133 requires that ``it be shown * * * that

such delay was unavoidable.'' This

[[Page 49833]]

requirement is regarded as requiring not only a showing that the delay

which resulted in the abandonment of the application was unavoidable,

but also a showing of unavoidable delay from the time an applicant

becomes aware of the abandonment of the application until the filing of

a petition to revive. See In re Application of Takao 17 USPQ2d 1155

(Comm'r Pat. 1990). The burden of continuing the process of presenting

a grantable petition in a timely manner likewise remains with the

applicant until the applicant is informed that the petition is granted.

Id. An applicant seeking to revive an ``unavoidably'' abandoned

application is expected to cause a petition under Sec. 1.137(a) to be

filed without delay (i.e., promptly upon becoming notified, or

otherwise becoming aware, of the abandonment of the application). As

such, the placement of the requirement that a petition pursuant to

Sec. 1.137(a) be filed promptly upon becoming notified, or otherwise

becoming aware, of the abandonment of the application is appropriately

located in paragraph (a)(3), since Sec. 1.137(a)(3) includes the

requirement for a showing of unavoidable delay.

The requirement that an applicant seeking to revive an application

as ``unavoidably'' abandoned ``promptly'' file a petition under

Sec. 1.137 is regarded as a requirement that a petition pursuant to

Sec. 1.137(a) be filed without delay upon the applicant or his or her

representative being notified of, or otherwise becoming aware of, the

abandonment. Thus, under the current and proposed practice, the failure

to file a petition under Sec. 1.137(a) within three months of the date

the applicant or his or her representative is notified of, or otherwise

becomes aware of, the abandonment would generally be regarded as a

failure to ``promptly'' file a petition pursuant to Sec. 1.137.

Providing a time period based upon the date of abandonment during

which a petition pursuant to Sec. 1.137(b) must be filed to be timely,

but providing no comparable time period within which a petition

pursuant to Sec. 1.137(a) must be filed to be timely, results in the

misapplication of Sec. 1.137 on the part of practitioners, which in

turn results in an inordinate administrative burden to the Office. The

Office is proposing to either: (1) Eliminate the time period

requirement for filing a petition pursuant to Sec. 1.137(b), or (2)

provide comparable time period requirements for filing either a

petition pursuant to Sec. 1.137(a) and/or Sec. 1.137(b), which time

period will be based upon the date of the first Office notification

that the application had become abandoned or that the patent had

lapsed. Interested persons are advised to comment on each of these

proposals, since, depending upon further consideration by the Office

and the comments received in response to this notice of proposed

rulemaking, either proposal may be adopted in the final rule.

Providing the period of ``within one year of the date on which the

application became abandoned'' as the period during which a petition

under Sec. 1.137(b) may be timely filed has had the undesirable effect

of inducing applicants, or their representatives, to delay the filing

of a petition under Sec. 1.137(b) until the end of this one year

period. This deliberate delay in filing a petition under Sec. 1.137(b),

or use of this one year period as an extension of time, is considered

an abuse of Sec. 1.137(b). See In re Application of S., 8 USPQ2d 1630,

1632 (Comm'r Pats 1988). In addition, Sec. 1.137(b) was recently

amended to require that any petition thereunder include a statement

that the delay (i.e., the entire delay), and not merely the

abandonment, was unintentional. See Final Rule, ``Changes in Procedures

for Revival of Patent Applications and Reinstatement of Patents,''

published in the Federal Register at 58 FR 44277 (August 20, 1993) and

in the Patent and Trademark Office Official Gazette at 1154 Off. Gaz.

Pat Office 4 (September 14, 1993). As such, any intentional delay in

filing a petition under Sec. 1.137(b) is prohibited by the current

terms of the rule.

Under current rules, in instances in which an applicant, or his or

her representative, intentionally delays the filing of a petition under

Sec. 1.137(b) until the end of this one year period, but files a

petition under Sec. 1.137(b) within this one year period, the petition

is timely under Sec. 1.137(b)(4), but the statement that ``the delay

was unintentional'' is not appropriate.

In instances in which the filing of a petition under Sec. 1.137(b)

is intentionally delayed until the end of this one year period, and the

applicant, or his or her representative, miscalculates the actual date

of abandonment, or otherwise misdockets the end of this one year

period, the statement that ``the delay was unintentional'' is likewise

not appropriate, but the petition is also barred by the terms of the

rule. In addition, subsequent petitions under Sec. 1.137(a) are,

regardless of the original cause of the abandonment, barred due to the

applicant's failure to cause a petition under Sec. 1.137(a) to be

``promptly filed after the applicant is notified of, or otherwise

becomes aware of, the abandonment.'' See Application of S., 8 USPQ2d at

1632.

Where the applicant deliberately permits an application to become

abandoned (e.g., due to a conclusion that the claims are unpatentable

(e.g., that a rejection in an Office action cannot be overcome), or

that the invention lacks sufficient commercial value to justify

continued prosecution), the abandonment of such application is

considered a deliberately chosen course of action, and the resulting

delay cannot be considered ``unintentional'' within the meaning of 37

CFR 1.137(b). See In re Application of G., 11 USPQ2d 1378, 1380 (Comm'r

Pat. 1989). Likewise, where the applicant deliberately chooses not to

either seek or persist in seeking the revival of an abandoned

application, the resulting delay in seeking revival of the application

cannot be considered ``unintentional'' within the meaning of 37 CFR

1.137. The correctness or propriety of the rejection, or other

objection, requirement, or decision, by the Office, the appropriateness

of the applicant's decision to abandon the application or to not seek

or persist in seeking revival, or the discovery of new information or

evidence, or other change in circumstances subsequent to the

abandonment or decision not to seek or persist in seeking revival, are

immaterial to such intentional delay caused by the deliberate course of

action chosen by the applicant.

The intentional abandonment of an application, or an intentional

delay in seeking either the withdrawal of a holding of abandonment in

or the revival of an abandoned application, precludes a finding of

unavoidable or unintentional delay pursuant to Sec. 1.137. See In re

Maldague, 10 USPQ2d 1477, 1478 (Comm'r Pat. 1988).

Proposed Elimination of the Time Period Requirement for Filing a

Petition Pursuant to Sec. 1.137(b)

Under this proposal, an intentional delay in the filing of a

petition under Sec. 1.137(b) will not result in an untimely petition

pursuant to Sec. 1.137(b). The statement that ``the delay was

unintentional,'' however, will continue to be inappropriate. That is,

where there is an intentional delay in the filing of a petition under

Sec. 1.137(b), the statement that ``the delay was unintentional'' will

continue to be inappropriate (i.e., the applicant, or his or her

representative cannot properly make this statement, and thus cannot

properly request revival of the application), but Sec. 1.137(b) would

no longer include an additional time period requirement. It is

anticipated that the effects of prosecution delay due to abandonment on

patent term under Public Law 103-465, and the proposed

[[Page 49834]]

changes to Sec. 1.137(c), will eliminate any incentive to intentionally

delay the revival of an abandoned application.

An applicant, assignee, or his or her representative, desiring the

revival of an application that has inadvertently or unintentionally

become abandoned is expected to act without intentional delay in

seeking revival of the application. The Office does not question

whether there has been an intentional or otherwise impermissible delay

when a petition pursuant to Sec. 1.137 is filed within three months of

the date the applicant is first notified by the Office that the

application is abandoned. Where, however, there is a greater delay

between the date the applicant is first notified by the Office that the

application is abandoned and the filing of a petition pursuant to

Sec. 1.137(b), the Office may raise the question as to whether the

delay was unintentional, and may require more than a mere statement

that the delay was unintentional. The Office may question whether the

delay was unintentional in instances in which an applicant fails to

timely seek reconsideration of a decision refusing to revive an

abandoned application (see Sec. 1.137(d)).

Regardless of whether the time period requirement in Sec. 1.137(b)

is eliminated, applicants seeking revival of an abandoned application

are advised to file a petition pursuant to Sec. 1.137 within three

months of first notification that the application is abandoned to avoid

the question of intentional delay being raised by the Office or third

parties seeking to challenge any patent issuing from the application.

While this proposal would permit revival pursuant to Sec. 1.137(b)

without regard to the period of abandonment, Sec. 1.137(a) currently

permits revival pursuant thereto without regard to the period of

abandonment. In addition, the Office currently entertains petitions

pursuant to Sec. 1.183, albeit under strictly limited conditions, to

waive the time period requirement in Sec. 1.137(b). Since an

application may currently be revived pursuant to Sec. 1.137 without

regard to the period of abandonment, any current reliance upon the

period of abandonment to ensure that the application will never issue

as a patent is misplaced. Thus, the proposed elimination of the time

period requirement in Sec. 1.137(b) would not significantly decrease

the relationship between the period of abandonment of an application

and the likelihood that such application would ever issue as a patent.

In the event that the proposed elimination of the time period

requirement for filing a petition pursuant to Sec. 1.137(b) is adopted,

public comment is also requested on the application of this rule change

to applications that were abandoned prior to the effective date of this

rule change. This provision could be made effective as to petitions

filed on or after the effective date of the rule change, which would

permit the revival pursuant to Sec. 1.137(b) of applications abandoned

for extended periods of time, provided that the entire delay was

unintentional. This provision could also be made effective as to

applications abandoned on or after the effective date, with the

provisions of current Sec. 1.137(b) being applied to applications

abandoned prior to the effective date of the rule change. This

provision could also be made effective as to applications abandoned

within and/or having a petition to revive filed within a specified

period preceding the effective date of the rule change.

Proposed Comparable Time Period Requirements Each of Secs. 1.137 (a)

and (b) Based Upon the Date of the First Office Notification That the

Application Had Become Abandoned or That the Patent Had Lapsed

The Office is also considering amending each of Secs. 1.137 (a) and

(b) to include an express requirement that a petition thereunder be

filed within a time certain. Specifically, the Office is also

considering amending Sec. 1.137(a) to include the express requirement

that a petition thereunder be filed within three months of the date of

the first Office notification that the application had become abandoned

or that the patent had lapsed and amending Sec. 1.137(b) to include the

requirement that a petition thereunder be filed within three months of

the date of the first Office notification that the application had

become abandoned or that the patent had lapsed, or within three months

of the date of the first decision on a timely petition pursuant to

Sec. 1.137(a).

The ``promptly filed'' requirement in Sec. 1.137(a) is the subject

of various interpretations by applicants seeking revival pursuant to

Sec. 1.137(a). To avoid misunderstandings as to the timeliness with

which the Office expects an applicant seeking revival pursuant to

Sec. 1.137(a) to file a petition thereunder, the Office is considering

amending Sec. 1.137(a) to include the express requirement that a

petition thereunder be filed within a time certain. Providing a period

during which a timely petition pursuant to Sec. 1.137 (a) and/or (b)

may be filed based upon the date of the first Office notification that

the application had become abandoned or that the patent had lapsed,

rather than the date of abandonment or patent lapse, is considered a

better measure of timeliness. In addition, providing such a period will

reduce uncertainty as to the expiration of the period during which a

timely petition pursuant to Sec. 1.137(b), as well as Sec. 1.137(a),

may be filed.

Therefore, the Office is also considering basing the period during

which a timely petition under Sec. 1.137 (b), as well as Sec. 1.137(a),

may be filed on the date of notification of the abandonment, rather

than the date of abandonment, and considers that a period of within

three months of the date of the first Office notification that the

application had become abandoned or that the patent had lapsed to be

the appropriate period.

Under the appropriate circumstances, petitions under Sec. 1.183 to

waive any time period requirement in Secs. 1.137(a) and/or (b) would be

available. Waiver of any requirement of Sec. 1.137 will, in accordance

with Sec. 1.183, be strictly limited to an ``extraordinary situation''

in which ``justice requires'' such waiver.

Section 1.137(a)(1), as proposed, would replace the phrase ``a

proposed response to continue prosecution of that application, or the

filing of a continuing application, unless either has been previously

filed'' with ``accompanied by the required reply, unless previously

filed. In a nonprovisional application abandoned for failure to

prosecute, the proposed reply requirement may be met by the filing of a

continuing application. In an abandoned application or a lapsed patent,

for failure to pay any portion of the required issue fee, the proposed

reply must be the issue fee or any outstanding balance thereof.''

Section 1.137(b)(1), as proposed, would likewise replace the phrase

``Accompanied by a proposed response to continue prosecution of that

application, or filing of a continuing application, unless either has

been previously filed'' with ``accompanied by the required reply,

unless previously filed. In a nonprovisional application abandoned for

failure to prosecute, the proposed reply requirement may be met by the

filing of a continuing application. In an abandoned application or a

lapsed patent, for failure to pay any portion of the required issue

fee, the proposed reply must be the issue fee or any outstanding

balance thereof.''

While the revival of applications abandoned for failure to timely

prosecute and for failure to timely pay the issue fee are proposed to

be incorporated together in Sec. 1.137, the statutory provisions for

the revival of an application abandoned for failure to timely prosecute

and for failure to

[[Page 49835]]

timely submit the issue fee are mutually exclusive. See Brenner v.

Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir.), cert. denied 393 U.S.

926, 159 USPQ 799 (1968). 35 U.S.C. 151 authorizes the acceptance of a

delayed payment of the issue fee, if the issue fee ``is submitted * * *

and the delay in payment is shown to have been unavoidable.'' 35 U.S.C.

41(a)(7) likewise authorizes the acceptance of an ``unintentionally

delayed payment of the fee for issuing each patent.'' Thus, 35 U.S.C.

41(a)(7) and 151 each require payment of the issue fee as a condition

of reviving an application abandoned or patent lapsed for failure to

pay the issue fee. Therefore, the filing of a continuing application

without payment of the issue fee or any outstanding balance thereof is

not an acceptable proposed reply in an application abandoned or patent

lapsed for failure to pay any portion of the required issue fee.

The Notice of Allowance requires the timely payment of the issue

fee in effect on the date of its mailing to avoid abandonment of the

application. In instances in which there is an increase in the issue

fee by the time of payment of the issue fee required in the Notice of

Allowance, the Office will mail a notice requiring payment of the

balance of the issue fee then in effect. The phrase ``for failure to

pay any portion of the required issue fee'' applies to those instances

in which the applicant fails to pay either the issue fee required in

the Notice of Allowance or the balance of the issue fee required in a

subsequent notice. In such instances, the proposed reply must be the

issue fee then in effect, if no portion of the issue fee was previously

submitted, or any outstanding balance of the issue fee then in effect,

if a portion of the issue fee was previously submitted.

These proposed changes to Secs. 1.137 (a)(1) and (b)(1) are

necessary to incorporate into Sec. 1.137 the revival of abandoned

applications and lapsed patents for the failure to timely reply to an

Office requirement in a provisional application, to timely pay the

issue fee, or to timely pay the full amount of the issue fee.

Sections 1.137 (a) and (b), as proposed, would each include a new

paragraph, paragraphs (a)(4) and (b)(4), respectively, providing that

any petition thereunder must be accompanied by any terminal disclaimer

(and fee as set forth in Sec. 1.20(d)) required pursuant to

Sec. 1.137(c), to include in Secs. 1.137 (a) and (b) an explicit

reference to the terminal disclaimer requirement in Sec. 1.137(c).

Section 1.137(c), as proposed, would change the phrase ``any

petition pursuant to paragraph (a) of this section'' to ``any petition

pursuant to this section.'' As the period for the timely filing of a

petition under Sec. 1.137(b) would no longer be based upon the period

of abandonment, administrative convenience no longer justifies not

requiring, for all design applications and all other nonprovisional

utility applications filed prior to June 8, 1995, a terminal disclaimer

under Sec. 1.137(c) for all petitions pursuant to Sec. 1.137.

In addition, the phrase ``not filed within six months of the date

of abandonment of the application'' is proposed to be removed from

Sec. 1.137(c). The only justification for the current six month

limitation on the terminal disclaimer requirement in Sec. 1.137(c) is

administrative convenience in treating a petition pursuant to

Sec. 1.137(a) filed within six months of the date of abandonment. Since

the date of abandonment is miscalculated in a significant number of

instances, this provision of Sec. 1.137(c) leads to errors in

determining when a terminal disclaimer is required pursuant to

Sec. 1.137(c), and thus leads to delays in continuing prosecution of

the abandoned application. In any event, administrative convenience is

no longer considered an adequate justification for the effective

different treatment that would result by operation of Pub. L. 103-465

of: (1) Applications filed on or after June 8, 1995, except for design

applications, and (2) applications filed prior to June 8, 1995 and all

design applications.

Section 1.137(d), as proposed, would change ``application'' to

``abandoned application or lapsed patent'' to incorporate into

Sec. 1.137 the revival of lapsed patents.

Section 1.137(e), as proposed, would provide that the time periods

set forth in Sec. 1.137 may be extended under the provisions of

Sec. 1.136.

Section 1.137(f), as proposed, will expressly provide that a

provisional application, abandoned for failure to timely reply to an

Office requirement, may be revived pursuant to Sec. 1.137 (a) or (b) so

as to be pending for a period of no longer than twelve months from its

filing date. In accordance with 35 U.S.C. 111(b)(5), Sec. 1.137(f), as

proposed, will clearly indicate that ``[u]nder no circumstances will a

provisional application be regarded as pending after twelve months from

its filing date.'' Sections 1.139 (a) and (b) each currently provide

that a provisional application may be revived so as to be pending for a

period of no longer than twelve months from its filing date, and that

under no circumstances will a provisional application be regarded as

pending after twelve months from its filing date.

Section 1.139 is proposed to be removed and reserved and its

subject matter added to Sec. 1.137.

Section 1.142 would be amended by replacement of ``response'' with

``reply'' in accordance with the proposed change to Sec. 1.111.

Section 1.144 is proposed to be amended for clarification purposes.

Section 1.146 is proposed to be amended for clarification purposes.

Section 1.152 is proposed to be amended by removing the prohibition

against color drawings and color photographs in design applications.

Section 1.152 would be amended to permit the use of color photographs

and color drawings in design applications subject to the petition

requirements of Sec. 1.84(a)(2) inasmuch as color may be an integral

element of the ornamental design. While pen and ink drawings may be

lined for color, a clear showing of the configuration of the design may

be obscured by this drafting method. New technologies, such as

holographic designs, fireworks and laser light displays may not be

accurately disclosed without the use of color.

The term ``article'' of Sec. 1.152 would be replaced by the term

``design'' as 35 U.S.C. 171 requires that the claim be directed to the

``design for an article'' not the article, per se. Therefore, to comply

with the requirements of 35 U.S.C. 112, first paragraph, it is only

necessary that the design as embodied in the article be fully disclosed

and not the article itself. The term ``must'' would be replaced by the

term ``should'' to allow for latitude in the illustration of articles

whose configuration may be understood without surface shading.

Clarification language would be added to note that the use of solid

black surfaces would be permitted for representation of the color black

as well as color contrast and that photographs and ink drawings must

not be combined as formal drawings in one application.

Section 1.154 paragraph (a) would be amended to clarify that a

voluntary submission (see comments under Sec. 1.152 relating to

substitution of ``design'' for ``article'') may and should be made of

``a brief description of the nature and intended use of the article in

which the design is embodied.'' It is current practice for design

examiners, in appropriate cases, to inquire as to the nature and

intended use of the article in which a claimed design is embodied. The

submission of such description will allow for a more accurate initial

classification, and aid in providing a proper and complete search at

the time of the first action on the merits. In those

[[Page 49836]]

instances where this feature description is necessary to establish a

clear understanding of the article in which the design is embodied,

provision of the feature description would help in reducing pendency by

eliminating the necessity for time consuming correspondence.

Specifically, requests for information prior to first action would be

avoided. Absent an amendment requesting deletion of the description it

would be printed on any patent that would issue.

Sections 1.155 (b) through (f) are proposed to be removed in view

of the proposed amendments to Sec. 1.137.

Section 1.163 is proposed to be amended to remove an unnecessary

and outmoded reference to a ``legible carbon copy of the original''

specification for plant applications.

Section 1.165 is proposed to be amended by removing a reference to

the artistic and competent execution of plant patent drawings which is

unnecessary in view of the reference to Sec. 1.84.

Section 1.167 is proposed to be amended by removing and reserving

paragraph (b) as unnecessary in view of Sec. 1.132.

Section 1.171 would no longer require an order for a title report

in reissue applications as the requirement for a certification on

behalf of all the assignees under concomitantly amended Sec. 1.172(a)

obviates the need for a title report and fee therefor. Section 1.171 is

also proposed to be amended by deletion of the requirement for an offer

to surrender the patent, which offer is seen to be redundant in view of

Sec. 1.178.

Section 1.172 is proposed to be amended to require that all

assignees establish their ownership interest by submission of evidence

of the chain of title or by specifying where such evidence is recorded

in the Office.

Section 1.175 relating to the content of the reissue oath or

declaration (MPEP 1414), as well as Secs. 1.48 and 1.324 relating to

correction of inventorship in an application and in a patent,

respectively, are proposed to be amended to remove the requirement for

a showing of a lack of deceptive intent based on facts and

circumstances. As the Office no longer investigates fraud and

inequitable conduct issues and a reissue applicant's statement of a

lack of deceptive intent is normally accepted on its face (See MPEP

1448), the current requirement in Sec. 1.175(a)(5) that it be shown how

the error(s) being relied upon arose or occurred without deceptive

intent on the part of the applicant appears to be unduly burdensome

upon applicants and the Office, and is proposed to be deleted. This

would apply to the initially identified error(s), under paragraph (a),

and any subsequently identified error(s) under paragraph (b). An

initial reissue oath or declaration would be required to be filed

pursuant to Sec. 1.175(a) limited to identification of the cause(s) of

the reissue, and stating generally that all errors being corrected in

the reissue application at the time of filing of the oath or

declaration arose without deceptive intent. The current practice under

Sec. 1.175(a)(3) and (a)(5) of specifically identifying all errors

being corrected at the time of filing the initial oath or declaration

would not be retained.

Paragraph (b)(1) of Sec. 1.175 would require a supplemental reissue

oath or declaration for errors corrected that were not covered by an

earlier presented reissue oath or declaration, such as the initial oath

or declaration pursuant to paragraph (a) of this section or one

submitted subsequent thereto (a supplemental oath or declaration under

this paragraph), stating generally that all errors being corrected

which are not covered by an earlier presented oath or declaration

pursuant to paragraphs (a) and (b) of this section arose without any

deceptive intention on the part of the applicant. A supplemental oath

or declaration that refers to all errors that are being corrected,

including errors covered by a reissue oath or declaration submitted

pursuant to paragraph (a) of this section, would be acceptable. The

specific requirement for a supplemental reissue oath or declaration to

cover errors sought to be corrected subsequent to the filing of an

initial reissue oath or declaration is not a new practice, but merely

recognition of a current requirement for a supplemental reissue oath or

declaration when additional errors are to be corrected. However, the

current practice of specifically identifying all supplemental errors

being corrected in a supplemental reissue oath or declaration would not

be retained.

A supplemental oath or declaration under paragraph (b)(1) would be

required to be submitted prior to allowance. The supplemental oath or

declaration may be submitted with any amendment prior to allowance,

paragraph (b)(1)(i), or in order to overcome a rejection under 35

U.S.C. 251 made by the examiner where there are errors sought to be

corrected that are not covered by a previously filed reissue oath or

declaration, paragraph (b)(1)(ii). Any such rejection by the examiner

will include a statement that the rejection may be overcome by

submission of a supplemental oath or declaration, which oath or

declaration states that the errors in issue arose without any deceptive

intent on the part of the applicant. A supplemental oath or declaration

under paragraph (b) would only be required for errors sought to be

corrected during prosecution of the reissue application. Where an

Office action contains only a rejection under 35 U.S.C. 251 and

indicates that a supplemental oath or declaration under this paragraph

would overcome the rejection, applicants are encouraged to authorize

the payment of the issue fee at the time the supplemental reissue oath

or declaration is submitted in view of the clear likelihood that the

reissue application will be allowed on the next Office action. Such

authorization will reduce the delays in the Office awaiting receipt of

the issue fee. Where there are no errors to be corrected over those

already covered by an oath or declaration submitted under paragraphs

(a) and (b)(1) of this section, e.g., the application is allowed on

first action, or where a supplemental oath or declaration has been

submitted prior to allowance and no further errors have been corrected,

a supplemental oath or declaration under this paragraph, or additional

supplemental oath or declaration under paragraph (b)(1), would not be

required.

Paragraph (b)(2) would provide that for any error sought to be

corrected after allowance, e.g., under Sec. 1.312, a supplemental oath

or declaration must accompany the requested correction stating that the

error(s) to be corrected arose without any deceptive intent on the part

of the applicant.

The quotes around lack of deceptive intent in Sec. 1.175(a)(6)

would be removed as the exact language would not be required. Section

1.175(a)(7), referencing Sec. 1.56, is proposed to be removed as

unnecessary in view of the reference to Sec. 1.56 in Sec. 1.63 that is

also referred to by Sec. 1.175(a). Section 1.175(b) noting the ability

of applicant to file affidavits or declarations of others and the

ability of the examiner to require additional information would be

deleted as unnecessary in view of Sec. 1.132 and 35 U.S.C 132. A

reference to Sec. 1.53(b) would be inserted in newly proposed

Sec. 1.175(c) to clarify that the initial oath or declaration under

Sec. 1.175(a) including those requirements under Sec. 1.63 need not be

submitted (with the specification, drawing and claims) in order to

obtain a filing date.

37 CFR 1.176 would be amended to permit the Office to require

restriction between claims added in a reissue application and the

original patent claims, where the claims added in the reissue

application are separate and distinct from the original patent claims.

[[Page 49837]]

This change is provided to deal with the added examination burden which

results when new inventions are added via the reissue application. The

Office would continue to not require restriction between original

claims of the patent, i.e., between claims that were in the patent

prior to filing the reissue application. In order for restriction to be

required between the original patent claims and the newly added claims,

the newly added claims must be separate and distinct from the original

patent claims. Restriction between multiple inventions in the newly

added claims would also be possible provided the newly added claims are

drawn towards separate and distinct inventions.

Section 1.177 is proposed to be amended to discontinue the current

practice that copending reissue applications must be issued

simultaneously unless ordered otherwise by the Commissioner pursuant to

petition.

Section 1.177 is proposed to be further amended by creating

paragraphs (a) through (d) to clarify when multiple reissue patents may

be issued and the conditions that applicant must comply with in order

to have the Commissioner exercise his or her discretion and authorize

issuance of multiple reissue patents. The Commissioner has discretion

pursuant 35 U.S.C. 251 to permit the issuance of multiple reissue

patents for distinct and separate parts of the thing patented. The

Commissioner will exercise his or her statutory discretion under the

limited conditions set forth in paragraph (a) of this section. Absent

compliance with the provisions of paragraph (a) of this section, as

defined by paragraphs (b) and (c) of this section, the Commissioner

will not exercise his or her discretion under the statute and will not

permit the issuance of multiple reissue applications, as is set forth

in paragraph (d) of this section.

The conditions for the Commissioner to exercise his or her

discretion and permit multiple reissue patents to be issued for

distinct and separate parts of the thing patented set forth in

paragraph (a) of this section are as follows: (1) Copending reissue

applications for distinct and separate parts of the thing patented have

been filed, (2) Applicant has filed in each copending reissue

application a timely demand by way of petition for multiple reissue

patents, (3) The required filing and issue fees for each copending

reissue application have been paid, and (4) The petition for multiple

reissue patents is granted prior to issuance of a reissue patent on any

of the copending reissue applications.

Paragraph (b) of Sec. 1.177 would set forth the requirements of the

petition provided for in paragraph (a)(2) of this section, which

requirements are: (1) A request for the issuance of multiple reissue

patents for distinct and separate parts of the thing patented, (2) The

petition fee pursuant to Sec. 1.17(i), (3) An identification of the

other copending reissue application(s), (4) A statement that the

inventions as claimed in the copending reissue applications are

distinct and separate parts of the thing patented, and (5) A showing

sufficient to establish to the satisfaction of the Commissioner that

the claimed subject matter of the thing patented is in fact being

divided into distinct and separate parts.

The ``distinct and separate parts of the thing patented'' means two

things: (1) That the thing patented is being proposed to be divided

into separate parts, i.e., the claims in the original patent are being

separated into different reissue applications, and (2) that the divided

claims are distinct as set forth in MPEP 802.01.

Items (4) and (5) are intended to cover those situations where the

Commissioner can and has determined, based on material and/or

information supplied by applicant, or otherwise, that the subject

matter of the thing patented is in fact being separated into parts that

are distinct.

The Commissioner intends to delegate the authority for decisions on

the petitions required under this section to the Group Directors of the

groups where the copending reissue applications are pending.

Paragraph (c) of Sec. 1.177 would define the timeliness

requirements for submission of the petitions set forth in paragraph

(a)(1) of this section. When the copending reissue applications are

filed at the same time, the petitions must be filed no later than the

earliest submission of the reissue oath or declaration under

Sec. 1.175(a) for any of the copending reissue applications. When the

copending reissue applications are filed at different times, the

petitions must be filed no later than the earliest of: (1) Payment of

the issue fee for any of the copending reissue applications, or (2)

submission of the reissue oath or declaration under Sec. 1.175 in the

later filed copending reissue application.

Paragraph (d) of Sec. 1.177 sets forth that the Commissioner will

not permit multiple reissue patents to be issued if the requirements of

this section are not met.

It is contemplated that where the requirements of paragraphs (a)

and (b) of Sec. 1.177 are capable of being perfected, the Office will

give a one-month time period for perfection, with extensions of time

available under Sec. 1.136(a). Where a first copending reissue

application has issued, however, perfection would not be possible. It

is not the intent of the Commissioner to provide any possibility of

review by way of appeal to the Board of Patent Appeals and

Interferences from his or her determination that the requirements of

this section have not been complied with. Review of determinations on

questions as to whether it has been established that the copending

reissue applications are for distinct and separate parts of the thing

patented will be by way of petition under Sec. 1.181(a)(3) and

subsequently to court as to whether the Commissioner, or his or her

designate, has properly exercised the discretion provided by 35 U.S.C.

251 as is now proposed to be implemented in Sec. 1.177.

The proposed changes are not intended to affect the type of errors

that are or are not appropriate for correction under 35 U.S.C. 251,

e.g., a patent granted on elected claims will not be considered to be

partially inoperative by reason of claiming less than they had a right

to claim and applicant's failure to timely file a divisional

application is not considered to be the type of error that can be

corrected by a reissue. MPEP 1402 and 1450.

Section 1.177 is also proposed to be clarified by a new more

descriptive title in view of the substantive amendments and a reference

to the statutory authority.

Section 1.181 is proposed to be amended by removing paragraphs (d),

(e) and (g) as unnecessary and at most representing internal

instructions.

Section 1.182 is proposed to be amended by providing that a

petition under the section may be granted ``subject to such other

requirements as may be imposed'' by the Commissioner, language similar

to that appearing for petitions under Sec. 1.183. The section would

have removed as unnecessary a statement that a decision on a petition

thereunder will be communicated to interested parties in writing.

Section 1.184 is proposed to be removed and reserved as

representing internal instructions.

Section 1.191 would be amended, to provide for an appeal only after

the claims of an applicant or a patent owner of a patent under

reexamination are twice rejected, by deletion of appeal after having

received a final rejection. The reference to a final rejection is

deemed unnecessary in view of the proposed amendment to Sec. 1.113 by

addition of paragraph (c) prohibiting a first action final rejection.

An appeal

[[Page 49838]]

would not then be appropriate in any application including reissue and

continued prosecution (Sec. 1.53(b)(3)) applications or in a patent

under reexamination unless that application or that patent under

reexamination in which an appeal is filed has been twice rejected,

particularly in view of the elimination of first action final

rejections. A second rejection need not be a final rejection for an

appeal to be taken as is currently the practice. However, an applicant

or patent owner of a patent under reexamination would not be able to

appeal after a first action rejection in a continuation, divisional or

continued prosecution application as no first action would be a final

rejection and the only basis to appeal would be that the claims of an

applicant or patent owner of a patent under reexamination have been

twice rejected in the same application or the same patent under

reexamination.

Section 1.191, paragraph (a), would be amended for conformance with

the language of 35 U.S.C. 134 by replacement of ``the claims of which

have'' by ``whose claims have.'' Section 1.191 would also be amended by

replacement of ``response'' with ``reply'' in accordance with the

proposed change to Sec. 1.111.

Sections 1.192, 1.193, 1.194, 1.196, and 1.197 are proposed to be

amended to change ``the appellant'' to ``appellant'' for consistency.

Paragraph (a) of Sec. 1.192 would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.193 would be amended in its title by addition of ``and

substitute brief'' to more accurately reflect the section's contents.

Section 1.193 would also be amended, by revision of paragraph (a) into

paragraphs (a)(1) and (a)(2) and revision of paragraph (b) into

paragraphs (b)(1) and (b)(2). Paragraph (a)(1) would retain the subject

matter of current paragraph (a). Paragraph (a)(2) would specifically

prohibit the inclusion of a new ground of rejection in an examiner's

answer.

Paragraph (b)(1) would remove the current discretion under existing

paragraph (b) of this section of the examiner to enter a new ground of

rejection in an examiner's answer responding to an appeal in

conformance with proposed paragraph (a)(2). Paragraph (b)(1) would

require the examiner to reopen prosecution to enter any new ground of

rejection. Reopening of prosecution would require entering of any

previously submitted paper that has been refused entry.

Paragraph (b)(1) of Sec. 1.193 would also provide appellant with a

right to file a substitute appeal brief in compliance with Sec. 1.192

in reply to an examiner's answer where the right to file a substitute

appeal brief would not be dependent upon a new point of argument being

present in the examiner's answer. The current practice of permitting

reply briefs based solely on a finding of a new point of argument, as

set forth in current paragraph (b), would be eliminated thereby

preventing present controversies as to whether a new point of argument

has been made by the primary examiner. Appellant would be assured of

having the last submission prior to review by the Board. Upon receipt

of a substitute appeal brief the examiner would either acknowledge its

receipt and entry or reopen prosecution to respond to any new issues

raised in the substitute appeal brief. Should the Board desire to

remand the appeal to the primary examiner for comment on the latest

submission by appellant or to clarify an examiner's answer, MPEP

1211,1211.01, and 1212, appellant would be entitled to submit a

substitute appeal brief in response to the reply by the examiner to the

Board's inquiry, which reply would be by way of a substitute examiner's

answer. The use of substitute appeal briefs and substitute examiner's

answers is intended to provide the Board with a single most current

paper from each party.

Paragraph (b)(2) of Sec. 1.193 would provide that if appellant

desires that the appeal process be reinstated in reply to the

examiner's reopening of prosecution under paragraph (b)(1) of this

section, appellant would be able to file a new appeal brief under

Sec. 1.192 and a request to reinstate the appeal. Amendments,

affidavits or other new evidence would not be entered if submitted with

a request to reinstate the appeal. Reinstatement of the appeal would

constitute a new notice of appeal but no additional appeal fees would

be required, since such fees have been previously paid. The intent of

the rule change is to give appellant (rather than the examiner) the

option to continue the appeal if desired (particularly under a 20 year

term), or to continue prosecution before the examiner in the face of a

new ground of rejection. Should an appeal brief be elected as the

response to the examiner reopening prosecution based on a new ground of

rejection under paragraph (b)(1) of this section, the examiner may

under paragraph (a)(1) of this section issue an examiner's answer.

Section 1.194, paragraph (b), is proposed to be amended to provide

that a request for an oral hearing must be filed in a separate paper.

Section 1.194, paragraph (c), is proposed to be amended to provide

that appellant will be notified when a requested oral hearing is

unnecessary, e.g., a remand is required.

Section 1.196, paragraphs (b) and (d), are proposed to be combined

by amending paragraph (b) to specifically provide in paragraph (b) for

a new ground of rejection for both appealed claims and for allowed

claims present in an application containing claims that have been

appealed rather than the current practice under paragraph (d) of

recommending a rejection of allowed claims that is binding on the

examiner. The effect of an explicit rejection of an allowed claim by

the Board of Patent Appeals and Interferences is not seen to differ

from a recommendation of a rejection and would serve to advance the

prosecution of the application by having the rejection made at an

earlier date by the Board of Patent Appeals and Interferences rather

than waiting for the application to be forwarded and acted upon by the

examiner. The current practice, that the examiner is not bound by the

rejection should appellant elect to proceed under paragraph (b)(1) and

an amendment or showing of facts not previously of record in the

opinion of the examiner overcomes the new ground of rejection, is not

proposed to be changed. A period of two months would now explicitly be

set forth for a reply to a decision by the Board of Patent Appeals and

Interferences containing a new ground of rejection pursuant to

Sec. 1.196(b), which would alter the one month now set forth for

replies to recommended rejections of previously allowed claims. MPEP

1214.01, page 1200-28. Extensions of time would continue to be governed

by Sec. 1.196(f) and Sec. 1.136(b) (and not by Sec. 1.136(a)).

The last sentence of paragraph (b)(2) of Sec. 1.196 would be

amended to clarify that appellants do not have to both appeal and file

request for reconsideration where only a reconsideration of a portion

of the decision is sought in that a decision on a request for

reconsideration will incorporate the earlier decision for purposes of

appeal of the earlier decision for which only a partial request for

reconsideration may have been filed. Additionally it is clarified that

decisions on reconsideration are final unless noted otherwise in the

decision in that under some circumstances it may not be appropriate to

make a decision on reconsideration final as is currently automatically

provided for.

Section 1.196 would have a new paragraph (d) providing the Board of

Patent Appeals and Interferences with explicit authority to have an

appellant

[[Page 49839]]

clarify the record in addition to what is already provided by way of

remand to the examiner, MPEP 1211, and appellant's compliance with the

requirements of an appeal brief, Sec. 1.192(d). Paragraph (d)(1) would

provide that an appellant may be required to address any matter that is

deemed appropriate for a reasoned decision on the pending appeal. Such

matters would include:

(1) The applicability of particular case law that has not been

previously identified as relevant to an issue in the appeal,

(2) The applicability of prior art that has not been made of

record, and

(3) The availability of particular test data that would be

persuasive in rebutting a ground of rejection.

Paragraph (d)(2) would provide that appellant would be given a time

limit within which to reply to any inquiry under paragraph (d)(1) of

this section. Time limits, unlike time periods for reply, are not

extendable under Sec. 1.136(a).

Section 1.197, paragraph (b), is proposed to be amended to provide

a period of two months, rather than the one month currently provided,

for the single request for reconsideration or modification of the Board

decision as provided for in Sec. 1.197(b).

Section 1.291, paragraph (c), is proposed to be amended by removing

the blanket limitation of one protest per protestor and would provide

for a second or subsequent submission in the form of additional prior

art. Mere argument that is later submitted by an initial protestor

would continue not to be entered and returned unless it is shown that

the argument relates to a new issue that could not have been earlier

raised. MPEP 1907(b). Although, later submitted prior art would be made

of record by a previous protestor without a showing that it relates to

a new issue, it should be noted that entry of later submitted prior art

in the file record does not assure its consideration by the examiner if

submitted late in the examination process. Accordingly, initial

protests should be as complete as possible when first filed.

In view of the proposed change to Sec. 1.291(a) of this section in

the 18-Month Publication Notice of Proposed Rulemaking, discussed

supra, e.g., at Sec. 1.62 of the preamble, limiting the filing of

protests to the issuance of patents to particular time periods (none

after the notice of allowance is mailed, none after two months from

publication or the filing of protests with a fee during the two-month

period from publication where a notice of allowance has not been

mailed), the restriction of protests by number is deemed unnecessary

and is recognized as ineffective in that the current rule may allow for

more than one protest to be filed on behalf of a party.

Section 1.291 paragraph (c) would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.294 paragraph (b) would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.304(a)(1) is proposed to be amended to replace

``consideration'' by ``reconsideration,'' an error that resulted from

mistyping when it first appeared in the Federal Register.

Section 1.312, paragraph (b), is proposed to have a reference to

Sec. 1.175(b) added in view of the proposed change in Sec. 1.175(b)

referencing Sec. 1.312(b).

Section 1.313 is proposed to be amended by the addition of

paragraph (c) informing applicants that unless written notification is

received that the application has been withdrawn from issue at least

two weeks prior to the projected date of issue, applicants should

expect that the application will issue as a patent. Once an application

has issued, the Office is without authority to grant a request under

Sec. 1.313 notwithstanding submission of the request prior to issuance

of the patent.

Sections 1.316 (b) through (f) are proposed to be removed as they

would be combined in proposed Sec. 1.137.

Sections 1.317 (b) through (f) are proposed to be removed as they

would be combined in proposed Sec. 1.137.

Section 1.318 is proposed to be removed and reserved as being an

internal Office instruction.

Section 1.324 is proposed to be amended by creating paragraphs (a)

and (b). The requirement for factual showings to establish a lack of

deceptive intent would be deleted, with a statement to that effect

being sufficient, paragraph (a).

As Office practice (MPEP 1481) is to require the same type and

character of proof of facts as in petitions under Sec. 1.48(a), a

showing of diligence proposed to be deleted in Sec. 1.48 would not be

continued in either Sec. 1.48 or Sec. 1.324, which currently follows

the requirements of Sec. 1.48. The applicability of a rejection under

35 U.S.C. 102(f)/(g) against a patent with the wrong inventorship set

forth therein is deemed to provide sufficient motivation for prompt

correction of the inventorship without the need for a separate

requirement for diligence.

The parties set forth in 35 U.S.C. 256 are interpreted to be only

the person named as an inventor or not named as an inventor through

error. Accordingly, Sec. 1.324 is proposed to be amended, paragraph

(b)(1), to explicitly require a statement relating to the lack of

deceptive intent only from each person who is being added or deleted as

an inventor, as opposed to the current practice of requiring a

statement from each original named inventor and any inventor to be

added.

The current requirements for an oath or declaration under Sec. 1.63

by each actual inventor would be replaced, paragraph (b)(2) of

Sec. 1.324, by a statement from the current named inventors who have

not submitted a statement under paragraph (b)(1) of Sec. 1.324 either

agreeing to the change of inventorship or stating that they have no

disagreement in regard to the requested change. Not every original

named inventor would necessarily have knowledge of each of the

contributions of the other inventors and/or how the inventorship error

occurred, in which case their lack of disagreement to the requested

change would be sufficient.

Paragraph (b)(3) of Sec. 1.324 would require the written consent of

the assignees of all parties who submitted a statement under paragraph

(b)(1) and (b)(2) of this section similar to the current practice of

consents by the assignees of all the existing patentees. A

clarification reference to Sec. 3.73(b) has been added.

Paragraph (b)(4) of Sec. 1.324 states the requirement for a

petition fee as set forth in Sec. 1.20(b).

Section 1.325 relating to mistakes not corrected is proposed to be

removed and reserved as unnecessary in that mistakes cannot be

corrected unless a basis for their correction is found.

Sections 1.351 and 1.352 are proposed to be removed and reserved as

unnecessary in that they are internal instructions.

Section 1.366, paragraph (b), would have the term ``certificate''

removed as unnecessary. Paragraph (c) would be clarified by changing

``serial number'' to ``application number'' which consists of the

serial number and the series code (e.g., ``08/''). Paragraph (d) would

have the suggested requirements for the patent issue date and the

application filing date removed as unnecessary in that the patent

number is sufficient to identify the file and the change parallels an

intended deletion of these dates from forms PTO/SB/45 and PTO/SB/47.

The term ``serial'' would be removed from paragraph (d).

Section 1.377, paragraph (c), would be amended to remove the

requirement

[[Page 49840]]

that the petition be verified in accordance with the proposed change to

Sec. 1.4(d)(2).

Section 1.378, paragraph (d), would be amended to remove the

requirement that the statement be verified in accordance with the

proposed change to Sec. 1.4(d)(2).

Section 1.425 would be amended by removing paragraph (a) and its

requirement for: Proof of the pertinent facts, which relates to the

lack of cooperation or unavailability of the inventor for which status

is sought and by deleting paragraph (b) and its requirements for: Proof

of the pertinent facts, the presence of a sufficient proprietary

interest, and a showing that such action is necessary to preserve the

rights of the parties or to prevent irreparable damage. Additionally,

the requirement that the last known address of the non-signing inventor

be stated would be removed. The current requirements are thought to be

unnecessary in view of the need for submission of the same information

in a petition under 37 CFR 1.47 during the national stage. The

paragraph to be added would parallel the requirement in PCT Rule 4.15

for a statement explaining to the satisfaction of the Commissioner the

lack of the signature concerned.

Section 1.484, paragraphs (d) through (f), would be amended by

replacement of ``response'' and ``respond'' with ``reply'' in

accordance with the proposed change to Sec. 1.111.

Section 1.485 paragraph (a) would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.488, paragraph (b), would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.492 proposed to be amended to add new paragraph (g).

Section 1.494, paragraph (c), would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.495, paragraph (c)(2), would be amended by replacement of

``response'' with ``reply'' in accordance with the proposed change to

Sec. 1.111.

Section 1.510, paragraph (e), would be amended to replace a

reference to Sec. 1.121(f), in view of it proposed removal, with a

reference to Sec. 1.530(d) in view of its proposed revision.

Section 1.530 the title and paragraph (a) would be amended by

replacement of ``amendment'' and ``response'' with ``reply'' in

accordance with the proposed change to Sec. 1.111.

Section 1.530, paragraph (d), would be replaced by paragraphs

(d)(1) through (d)(6) removing the reference to Sec. 1.121(f) in

accordance with the proposed deletion of Sec. 1.121(f). The manner of

making amendments in reexamination proceeding under the current

reexamination practice is governed by Sec. 1.530 (d)(1) through (d)(6).

Paragraph (d) would apply to proposed amendments in reexamination

proceedings. Paragraph (d)(1) would be directed to the manner of

proposing amendments in the specification other than in the claims.

Paragraph (d)(1)(i) would require the precise point to be indicated

where a proposed amendment is to be made. Paragraph (d)(1)(ii) would

require that all amendments including deletions be made by submission

of a copy of the rewritten paragraph(s) with markings. A change in one

sentence, paragraph, or page that results in only format changes to

other pages not being amended are not to be submitted. Paragraph

(d)(1)(iii) would require proposed amendments to the specification to

be made by rewritten relative to the patent specification and not

relative to a previous proposed amendment. Paragraph (d)(1)(iv) would

define the markings set forth in paragraph (d)(1)(ii).

Paragraph (d)(2) of Sec. 1.530 would relate to the manner of

proposing amendment of the claims in reexamination proceedings.

Paragraph (d)(2)(i)(A) would require that a proposed amendment include

the entire text of each patent claim which is proposed to be amended,

but not all pending claims, such as patent claims that have not been

proposed to be amended. Additionally, provision would be made for the

cancellation of patent or of a proposed claim by a direction to cancel

without the need for marking by brackets. Compare with deletion of

claims in reissue applications where only patent claims and not added

claims may be cancelled by direction, paragraph (b)(2)(i)(A). Paragraph

(b)(2)(i)(B) would prohibit the renumbering of the patent claims and

require that any proposed added claims follow the number of the highest

numbered patent claim. Paragraph (b)(2)(i)(C) would identify the type

of markings required by paragraph (d)(2)(i)(A), single underlining for

added material and single brackets for material deleted.

Paragraph (d)(2)(ii) would require the patent owner to set forth

the status of all patent claims, of all currently proposed claims, and

of all previously proposed claims that are no longer being proposed as

of the date of submission of each proposed amendment. Compare with

Sec. 1.121(b)(2)(ii), which does not require the status of patent

claims that were not amended or of added claims that were cancelled.

Paragraph (d)(2)(iii) of Sec. 1.530 would require an explanation of

the support in the disclosure for any proposed first-time amendments to

the claims on pages separate from the amendments along with any

additional comments. The absence of an explanation would result in an

incomplete reply, 35 U.S.C. 135.

Paragraph (d)(2)(iv) of Sec. 1.530 would require that each

submission of a proposed amendment to any claim (patent claims and all

proposed claims) requires copies of all proposed amendments to the

claims as of the date of the submission. A copy of a previous amendment

would not meet the requirement of this section in that all amendments

must be represented, as only the last amendment will be used for

printing. A copy of a patent claim that has not been proposed to be

amended is not to be presented.

Paragraph (d)(2)(v) of Sec. 1.530 would provide that the failure to

submit a copy of any proposed added claim would be construed as a

direction to cancel that claim.

Paragraph (d)(3) of Sec. 1.530 would clarify that: (1) A proposed

amendment may not enlarge the scope of the claims of the patent, (2)

that no amendment may be proposed in an expired patent, and (3) no

amendment will be incorporated into the

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