Changes to Patent Practice and Procedure

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

of practice 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. Exemplary changes

include: simplification of the procedure for filing continuation and

divisional applications; amendment of a number of rules to permit the

filing of a statement that errors were made without deceptive intent,

without a requirement for a further showing of facts and circumstances;

and elimination of the requirement that the inventorship be named in an

application on the day of its filing, which eliminates the need for

certain petitions to correct inventorship.

EFFECTIVE DATE: December 1, 1997.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein or Robert W. Bahr,

Senior Legal Advisors, 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 facsimile to (703) 308-6916.

SUPPLEMENTARY INFORMATION: This rule change implements the

Administration's program of reducing the regulatory burden on the

American public in accordance with the changes proposed in the Notice

of Proposed Rulemaking entitled ``1996 Changes to Patent Practice and

Procedure'' (Notice of Proposed Rulemaking), published in the Federal

Register at 61 FR 49819 (September 23, 1996), and in the Official

Gazette at 1191 Off. Gaz. Pat. Office 105 (October 22, 1996). The

changes involve: (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 management 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.

Changes to Proposed Rules: This Final Rule contains a number of

changes to the text of the rules as proposed for comment. The

significant changes (as opposed to additional grammatical corrections)

are discussed below. Familiarity with the Notice of Proposed Rulemaking

is assumed.

Discussion of Specific Rules and Response to Comments: Forty-three

written comments were received in response to the Notice of Proposed

Rulemaking. The written comments have been analyzed. For contextual

purposes, the comment on a specific rule and response to the comment

are provided with the discussion of the specific rule. Comments in

support of proposed rule changes generally have not been reported in

the responses to comments sections.

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

10 are amended as follows:

Part 1

Section 1.4

Section 1.4, paragraphs (d)(1) and (2), are amended to be combined

into Sec. 1.4 paragraphs (d)(1)(i) and (d)(1)(ii). Section

1.4(d)(1)(ii) is also amended to include the phrase ``direct or

indirect copy'' to clarify that the copy of the document(s)

constituting the correspondence submitted to the Office may be a copy

of a copy (of any generation) of the original document(s), or a direct

copy of the original document(s).

Section 1.4(d)(2) is amended to provide that the presentation to

the Office (whether by signing, filing, submitting, or later

advocating) of any paper by a party, whether a practitioner or non-

practitioner, constitutes a certification under Sec. 10.18(b), and that

violations of Sec. 10.18(b)(2) may subject the party to sanctions under

Sec. 10.18(c). That is, by presenting a paper to the Office, the party

is making the certifications set forth in Sec. 10.18(b), and is subject

to sanctions under Sec. 10.18(c) for violations of Sec. 10.18(b)(2),

regardless of whether the party is a practitioner or non-practitioner.

The sentence ``[a]ny practitioner violating Sec. 10.18(b) may also be

subject to disciplinary action'' clarifies that a practitioner may be

subject to disciplinary action in lieu of or in addition to sanctions

under Sec. 10.18(c) for violations of Sec. 10.18(b).

Section 1.4(d)(2) is amended so that the certifications set forth

in Sec. 10.18(b) are automatically made upon presenting any paper to

the Office by the party presenting the paper. The amendments to

Secs. 1.4(d) and 10.18 support the 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, (Secs. 1.821 and 1.825 will be reviewed at a later date

in connection with other matters), 3.26, and 5.4 that 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 change to Secs. 1.4(d) and 10.18

automatically incorporates 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 amendments to Secs. 1.4(d) and

10.18 support an amendment to Sec. 1.97 (Secs. 1.637 and 1.673 will be

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

the requirements for certifications to requirements for statements.

This change in practice does not affect the separate verification

requirement for an oath or declaration under Sec. 1.63, affidavits or

declarations under Secs. 1.130, 1.131, and 1.132, or statements

submitted in support of a petition under Sec. 5.25 for a 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 is also maintained, as such requirements

are made rarely and only when deemed necessary (e.g., when persons

persist in translations which appear on their face to be inaccurate).

The requirements for certification of service on parties in

Secs. 1.248, 1.510, 1.637 and 10.142 are also maintained.

Section 1.4 is also amended to add 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 transferred

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

[[Page 53133]]

Section 1.6

Section 1.6(d)(3) is amended to provide that continued prosecution

applications under Sec. 1.53(d) may be transmitted to the Office by

facsimile. However, the procedures described in Sec. 1.8 do not apply

to, and no benefit under Sec. 1.8 will be given to, a continued

prosecution application under Sec. 1.53(d). That is, an applicant may

file a continued prosecution application by facsimile transmission, but

the filing date accorded such continued prosecution application will be

the date the complete transmission of the continued prosecution

application is received in the Office. For example, a continued

prosecution application transmitted by facsimile from California at

10:30 p.m. (Pacific time) on November 18, 1997, and received in the

Office at 1:30 a.m. (Eastern time) on November 19, 1997, will be

accorded a filing date of November 19, 1997. An applicant filing a

continued prosecution application by facsimile transmission bears the

responsibility of transmitting such application in a manner and at a

time that will ensure its complete and timely (Sec. 1.53(d)(1)(ii))

receipt in the Office.

An applicant filing an application under Sec. 1.53(d) (a continued

prosecution application) by facsimile must include an authorization to

charge (at least) the basic filing fee to a deposit account, or the

application must be treated under Sec. 1.53(f) as having been filed

without the basic filing fee (as fees cannot otherwise be transmitted

by facsimile). To avoid paying the late filing surcharge under

Sec. 1.16(e), an application (including an application under

Sec. 1.53(d)) must include the basic filing fee (Sec. 1.16(e)). As

such, payment of the basic filing fee for an application under

Sec. 1.53(d) on any date later than the filing date of the application

under Sec. 1.53(d) (even if paid within the period for reply to the

last action in the prior application) is ineffective to avoid the late

filing surcharge under Sec. 1.16(e). Therefore, unless an application

under Sec. 1.53(d) filed by facsimile includes an authorization to

charge the basic filing fee to a deposit account, the applicant will be

given a notification requiring payment of the appropriate filing fee

(Sec. 1.53(d)(3)) and the late filing surcharge under Sec. 1.16(e) to

avoid abandonment of the Sec. 1.53(d) application.

Section 1.6(d)(3) is also amended to delete the reference to

Sec. 1.8(a)(2)(ii)(D) as this paragraph was deleted in the Final Rule

entitled ``Communications with the Patent and Trademark Office''

(``Communications with the Office''), published in the Federal Register

at 61 FR 56439, 56443 (November 1, 1996), and in the Official Gazette

at 1192 Off. Gaz. Pat. Office 95 (November 26, 1996).

Section 1.6(d)(6) is amended to reflect the transfer of material

from Secs. 5.6, 5.7, and 5.8 to Secs. 5.1 through 5.5.

Section 1.6(e)(2) is amended to remove the requirement that the

statement be verified in accordance with the change to Secs. 1.4(d)(2)

and 10.18.

Section 1.6(f) is added to provide for the situation in which the

Office has no evidence of receipt of an application under Sec. 1.53(d)

(a continued prosecution application) transmitted to the Office by

facsimile transmission. Section 1.6(f) requires that a showing

thereunder include, inter alia, a copy of the sending unit's report

confirming transmission of the application under Sec. 1.53(d) or

evidence that came into being after the complete transmission of the

application under Sec. 1.53(d) and within one business day of the

complete transmission of the application under Sec. 1.53(d). Therefore,

applicants are advised to retain copies of the sending unit's reports

in situations in which such unit is used to transmit applications under

Sec. 1.53(d) to the Office or otherwise maintain a log book of the

transmission of any application under Sec. 1.53(d) to the Office. See

also ``Communications with the Patent and Trademark Office'' Final

Rule.

No comments were received regarding the proposed change to

Sec. 1.6.

Section 1.8

Section 1.8(a)(2)(i)(A) is amended to specifically refer to a

request for a continued prosecution application under Sec. 1.53(d) as a

correspondence filed for the purposes of obtaining an application

filing date, which is excluded by Sec. 1.8(a)(2)(i)(A) from the

procedure set forth in Sec. 1.8. The purpose of this amendment is to

render it clear that, notwithstanding that a continued prosecution

application under Sec. 1.53(d) may be filed by facsimile transmission,

the procedure set forth in Sec. 1.8 does not apply to a request for a

continued prosecution application under Sec. 1.53(d) (or any

correspondence filed for the purpose of obtaining an application filing

date). That is, the date on the certificate of transmission

(Sec. 1.8(a)) of an application under Sec. 1.53(d) is not controlling

(or even relevant), in that an application under Sec. 1.53(d) (a

continued prosecution application) filed by facsimile transmission will

not be accorded a filing date as of the date on the certificate of

transmission (Sec. 1.8(a)), unless Office records indicate, or

applicant otherwise establishes pursuant to Sec. 1.6(f), receipt in the

Office of the complete application under Sec. 1.53(d) on the date on

the certificate of transmission, and that date is not a Saturday,

Sunday, or Federal holiday.

Section 1.8(b)(3) is amended to remove the requirement that the

statement be verified in accordance with the change to Secs. 1.4(d)(2)

and 10.18.

Section 1.9

Section 1.9(d) is amended to define a small business concern as

used in 37 CFR Chapter I as any business concern meeting the size

standards set forth in 13 CFR Part 121 to be eligible for reduced

patent fees. The regulations of the Small Business Administration (SBA)

set forth the size standards of a business concern to be eligible for

reduced patent fees. See 13 CFR 121.802. Thus, the language in

Sec. 1.9(d) duplicating such size standards is deleted as redundant,

and to avoid confusion in the event that such size standards are

subsequently changed by the SBA. The MPEP will include SBA's

regulations concerning size standards for a business concern to be

eligible for reduced patent fees.

Section 1.9(f) is amended to add the phrase ``eligible for reduced

patent fees'' to clarify that a small entity as used in 37 CFR Chapter

I is limited to an independent inventor, a small business concern or a

non-profit organization that is eligible for reduced patent fees under

35 U.S.C. 41(h)(1).

Section 1.10

Sections 1.10 (d) and (e) are amended to remove the requirement for

a statement that is verified.

Comment 1: One comment suggested that Sec. 1.10 be amended to

clearly set forth the controlling date for correspondence filed by

``Express Mail'' under Sec. 1.10.

Response: Section 1.10 was substantially amended in the

``Communications with the Office'' Rule Final (discussed supra).

Section 1.10(a) as amended in the aforementioned Final Rule provides

that: (1) correspondence received by the Office that was delivered by

the ``Express Mail Post Office to Addressee'' service of the United

States Postal Service (USPS) under Sec. 1.10 will be considered filed

in the Office on the date of deposit with the USPS; (2) the date of

deposit with the USPS is shown by the ``date-in'' on the ``Express

Mail'' mailing label or other official USPS notation; and (3) if the

USPS deposit date cannot be determined, the correspondence will be

accorded the Office receipt date as the filing date.

[[Page 53134]]

Section 1.11

Section 1.11(b) is amended to provide that the filing of a

continued prosecution application under Sec. 1.53(d) of a reissue

application will not be announced in the Official Gazette. Although the

filing of a continued prosecution application of a reissue application

constitutes the filing of a reissue application, the announcement of

the filing of such continued prosecution application would be redundant

in view of the announcement of the filing of the prior reissue

application in the Official Gazette.

Section 1.14

Section 1.14(a) is amended to: (1) clarify the provisions of

Sec. 1.14(a); (2) provide that copies of an application-as-filed may be

provided to any person on written request accompanied by the fee set

forth in Sec. 1.19(b), without notice to the applicant, if the

application is incorporated by reference in a U.S. patent; and (3)

treat applications in the file jacket of a pending application under

Sec. 1.53(d) as pending rather than abandoned in determining whether

copies of, and access to, such applications will be granted.

Under current practice, the public is entitled to access to the

original disclosure (or application-as-filed) of an application, when

the application is incorporated by reference into a U.S. patent. See In

re Gallo, 231 USPQ 496 (Comm'r Pat. 1986). Section 1.14(a)(2) is added

to avoid the need for a petition under Sec. 1.14(e) to obtain a copy of

the original disclosure (or application-as-filed) of an application

that is incorporated by reference into a U.S. patent.

Section 1.14 is also amended to add a paragraph (f) to recognize

the change to Sec. 1.47 (a) and (b) which add exceptions to maintaining

pending applications in confidence by providing public notice to

nonsigning inventors of the filing of a patent application.

Comment 2: One comment stated that the change from ``applications

preserved in secrecy'' to ``applications preserved in confidence''

suggests a lower level of security for the applications permitting

greater discovery by third parties.

Response: The term ``secrecy'' in Sec. 1.14 was changed to

``confidence'' in the Final Rule entitled ``Miscellaneous Changes in

Patent Practice'' (``Miscellaneous Changes in Patent Practice''),

published in the Federal Register at 61 FR 42790 (August 19, 1996), and

in the Official Gazette at 1190 Off. Gaz. Pat. Office 67 (September 17,

1996). This change did not represent a change in practice, but merely

conformed the language of Sec. 1.14 to that of 35 U.S.C. 122 (the term

``secrecy'' is a term of art in regard to matters of national security,

and its former use in Sec. 1.14 was inappropriate).

Section 1.16

Section 1.16 is amended to add new paragraphs (m) and (n) including

the unassociated text following paragraphs (d) and (l).

No comments were received concerning Sec. 1.16.

Section 1.17

Section 1.17 (and Sec. 1.136(a)) adds 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 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. Section 1.17(a)(5)

provides the small entity and other than small entity amounts for the

new fifth-month extension fee.

Section 1.17(a) is being amended to permit a petition for a fifth-

month extension of time. As the Office may set a shortened statutory

period for reply of one-month or thirty days, whichever is longer, this

authority for a petition under Sec. 1.136(a) will permit an applicant

to extend the period for reply until the six-month statutory maximum

(35 U.S.C. 133) without resorting to a petition under Sec. 1.136(b), or

to extend by five months, pursuant to Sec. 1.136(a), a non-statutory

period for taking action (e.g., the time period in Sec. 1.192(a) for

filing an appeal brief).

Section 1.17 paragraphs (e), (f), and (g) are rewritten as

Sec. 1.17 paragraphs (b), (c), and (d).

Section 1.17(h) is amended to delete references to petitions under

Secs. 1.47, 1.48, and 1.84. Sections 1.47, 1.48, and 1.84 (a) and (b)

are amended to contain a reference to the petition fee set forth in

Sec. 1.17(i), rather than the petition fee set forth in Sec. 1.17(h).

Section 1.17(i) is amended to: (1) add a petition under Sec. 1.41

to supply the name(s) of the inventor(s) after the filing date without

an oath or declaration as prescribed by Sec. 1.63, except in

provisional applications; (2) add a petition under Sec. 1.47 for filing

by other than all the inventors or a person not the inventor; (3) add a

petition under Sec. 1.48 for correction of inventorship, except in

provisional applications; (4) add a petition under Sec. 1.59 for

expungement and return of information; (5) delete the references to

petitions under Secs. 1.60 and 1.62 in view of the deletion of

Secs. 1.60 and 1.62; (6) add a petition under Sec. 1.84 for accepting

color drawings or photographs; and (7) add a petition under Sec. 1.91

for entry of a model or exhibit.

Section 1.17(q) is amended to add a petition under Sec. 1.41 to

supply the name(s) of the inventor(s) after the filing date without a

cover sheet as prescribed by Sec. 1.51(c)(1) in a provisional

application.

Section 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, (Secs. 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, (Sec. 1.821 will be reviewed at a later

date in connection with other matters), and 5.3 are also amended to

replace the phrases ``response'' and ``respond'' with the phrase

``reply'' for consistency with Sec. 1.111.

Comment 3: One comment questioned why the terms ``respond'' and

``response'' in the rules of practice were being replaced with the term

``reply.''

Response: It is appropriate to use a single term (``reply'')

throughout the rules of practice, to the extent possible, to refer to

that ``reply'' by an applicant to an Office action required to avoid

abandonment and continue prosecution.

Comment 4: At least one comment noted that there is no statutory

authority under 35 U.S.C. 41(a)(8)(C) for the $2,010 amount set for the

fifth month extension of time.

Response: While the Notice of Proposed Rulemaking proposed a fifth

month extension fee of $2010, a Notice of Proposed Rulemaking entitled

``Revision of Patent and Trademark Fees for Fiscal Year 1998'' (``1998

Fee Revision''), published in the Federal Register at 62 FR 24865 (May

7, 1997), and in the Official Gazette at 1198 Off. Gaz. Pat. Office 97

(May 27, 1997), proposed that this fee be set at $2060. The Office is

now adopting the $2060 fifth month extension fee as proposed in the

``1998 Fee Revision'' Notice of Proposed Rulemaking.

Under 35 U.S.C. 41(a)(8)(C) (1991), the Commissioner is authorized

to charge $340 for any third or subsequent petition for a one-month

extension of time. However, under 35 U.S.C. 41(f), the additional fee

established pursuant to 35 U.S.C. 41(a)(8)(C) for a subsequent petition

for a one-month extension of time has been increased to $560 (i.e.,

$560 is the current difference (established under 35 U.S.C.

41(a)(8)(C)) between the $1510 fee for a four-month extension of time

and the $950 three-month extension of time). The $1510 fee

[[Page 53135]]

for a four-month extension of time plus the $560 fee for an additional

month is $2070 (this differs from the $2060 fee proposed in the ``1998

Fee Revision'' Notice of Proposed Rulemaking due to rounding).

Therefore, the Office is authorized under 35 U.S.C. 41(a)(8) to

establish a fee of $2060 for a five-month extension of time.

Section 1.21

Section 1.21(l) is amended for consistency with Sec. 1.53, and

Sec. 1.21(n) is amended to change the reference to an improper

application under Secs. 1.60 or 1.62 to a reference to an application

in which proceedings are terminated pursuant to Sec. 1.53(e).

No comments were received regarding the proposed change to

Sec. 1.21.

Section 1.26

Section 1.26(a) is amended to better track the statutory language

of 35 U.S.C. 42(d) and to add 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.

No comments were received regarding the proposed change to

Sec. 1.26.

Section 1.27

Section 1.27 paragraphs (a) through (d) are amended to remove the

requirement that a statement filed thereunder be ``verified,'' and to

replace ``aver'' and ``averring'' with ``state'' and ``stating.'' See

comments relating to Sec. 1.4(d). Section 1.27(b) is also amended for

clarification with the movement of a clause relating to ``any verified

statement'' within a sentence.

No comments were received regarding the proposed change to

Sec. 1.27.

Section 1.28

Section 1.28(a) is amended to remove the requirement for a

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

Section 1.28(a) is also amended to provide that a new small entity

statement is not required for a continuing or reissue application where

small entity status is still proper and reliance is placed 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) is further

amended to state that the payment of a small entity basic statutory

filing fee in a nonprovisional application, which claims benefit under

35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application (including

a continued prosecution application) or in a reissue application, where

the prior application or the patent has small entity status, will

constitute a 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 a 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(d) 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.

Comment 5: One comment asked whether the change to Sec. 1.28

regarding small entity requires that a small entity statement be filed

with each continuing application.

Response: While the filing of a continuing application requires a

new determination of entitlement to small entity status, Sec. 1.28(a)

continues to permit reliance on a small entity statement filed in a

prior application for nonprovisional continuing applications.

Section 1.28(c) is amended to remove the requirement for a

statement of facts explaining how an error in payment of a small entity

fee(s) occurred in good faith and how and when the error was

discovered. A fee deficiency payment under Sec. 1.28(c) must include

the difference between fee(s) originally paid as a small entity and the

other than small entity fee(s) in effect at the time of payment of the

complete fee deficiency. A fee deficiency payment under Sec. 1.28(c)

will be treated as a representation by the party submitting the 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.

Comment 6: One comment suggested that Sec. 1.28(c) be amended to

clarify current Office practice regarding the acceptance of papers

under Sec. 1.28(c)(2) in light of two recent District Court decisions:

(1) Haden Schweitzer Corp. v. Arthur B. Myr Industries, Inc., 901 F.

Supp. 1235, 36 USPQ2d 1020 (E.D. Mich. 1995); and (2) DH Technology,

Inc. v. Synergstex International, Inc., 937 F. Supp. 902, 40 USPQ2d

1754 (N.D. Cal. 1996).

Response: The Office is also aware of a recent District Court

decision in Jewish Hospital of St. Louis v. Idexx Laboratories, 951 F.

Supp 1, 42 USPQ2d 1720 (D. Me. 1996), that relies on Sec. 1.28(c)(2)

exclusively. The changes to Sec. 1.28(c) are not directed to the issue

of whether Sec. 1.28(c)(2) must be viewed as the exclusive remedy.

Nevertheless, an applicant or patentee can avoid undesirable results by

not claiming small entity status unless it is absolutely certain that

the applicant or patentee is entitled to small entity status (i.e.,

resolving any doubt, uncertainty, or lack of information in favor of

payment of the full fee). See MPEP 509.03 (``Small entity status must

not be established unless the person or persons signing the * * *

statement can unequivocally make the required self-certification''

(emphasis added)).

Section 1.33

Section 1.33 is amended to 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) is

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 was in Sec. 1.33(a), would be inconsistent with

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

the oath or declaration. The requirement for placement of the post

office address is equivalent to the requirement for the residence to

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 includes a reference to Sec. 1.34(b), use of the

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

``application'' rather than ``case,'' and deletion of the expression

``of which the Office.''

The former language of Sec. 1.33(b) is transferred to new

Sec. 1.4(g). Section 1.33(b) is amended to set forth the signature

requirement for papers filed in an application (formerly in

Sec. 1.33(a)). Section 1.33(b) is specifically amended to provide that

amendments and other papers filed in an application must be signed by:

(1) an attorney or agent of record appointed in compliance with

Sec. 1.34(b); (2) a registered attorney or agent not of record who acts

in a representative capacity under the provisions of Sec. 1.34(a); (3)

the assignee of record of the entire interest (if there is such); (4)

an assignee of record of an

[[Page 53136]]

undivided part interest (if there is such), so long as the amendment or

other paper is also signed by any assignee(s) of the remaining interest

and any applicant retaining an interest; or (5) all of the applicants,

including applicants under Secs. 1.42, 1.43 and 1.47, unless there is

an assignee of record of the entire interest and such assignee has

chosen to prosecute the application to the exclusion of the

applicant(s), and, as such, has taken action in the application in

accordance with Secs. 3.71 and 3.73. This is not a change in practice,

but simply a clarification of current signature requirements.

No comments were received regarding the proposed change to

Sec. 1.33.

Section 1.41

Section 1.41(a) (and Sec. 1.53) is amended to no longer require

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

application for patent to be accorded a filing date. The requirement

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

Section 1.41(a) is specifically amended: (1) To provide that a patent

is applied for in the name(s) of the actual inventor(s); (2) to add

paragraphs (a)(1) and (a)(2) indicating how the inventorship is set

forth in a nonprovisional and provisional application; and (3) to add

paragraph (a)(3) indicating the need for an identifier consisting of

alphanumeric characters if no name of an actual inventor is provided.

Section 1.41(a)(1) provides that the inventorship of a

nonprovisional application is that inventorship set forth in the oath

or declaration as prescribed by Sec. 1.63, except as provided for in

Secs. 1.53(d)(4) and 1.63(d). Section 1.41(a)(1) also provides that if

an oath or declaration as prescribed by Sec. 1.63 is not filed during

the pendency of a nonprovisional application, the inventorship is that

inventorship set forth in the application papers filed pursuant to

Sec. 1.53(b), unless a petition under this paragraph accompanied by the

fee set forth in Sec. 1.17(i) is filed supplying the name(s) of the

inventor(s).

Section 1.41(a)(2) provides that the inventorship of a provisional

application is that inventorship set forth in the cover sheet as

prescribed by Sec. 1.51(c)(1). Section 1.41(a)(2) also provides that if

a cover sheet as prescribed by Sec. 1.51(c)(1) is not filed during the

pendency of a provisional application, the inventorship is that

inventorship set forth in the application papers filed pursuant to

Sec. 1.53(c), unless a petition under this paragraph accompanied by the

fee set forth in Sec. 1.17(q) is filed supplying the name(s) of the

inventor(s).

35 U.S.C. 120 and Sec. 1.78(a) require, inter alia, that an

application have at least one inventor in common with a prior

application to obtain the benefit of the filing date of such

application. Considering the executed oath or declaration (or cover

sheet in a provisional application) the sole mechanism for naming the

inventor(s) would operate as a trap in the event that an application

were abandoned prior to the filing of an oath or declaration in favor

of a continuing application (or in the event that a cover sheet was not

filed in a provisional application). To avoid this result, Sec. 1.41 as

adopted provides that the inventorship is that inventorship named in an

executed oath or declaration under Sec. 1.63 (or in the cover sheet

under Sec. 1.51(c)(1) in a provisional application), but that if no

executed oath or declaration under Sec. 1.63 (or cover sheet under

Sec. 1.51(c)(1) in a provisional application) is filed during the

pendency of the application, the inventorship will be considered to be

the inventor(s) named in the original application papers.

In the peculiar situation in which no inventor is named in the

original application papers (or the correct inventor(s) are not named

in the original application papers), and no executed oath or

declaration under Sec. 1.63 (or cover sheet under Sec. 1.51(c)(1) in a

provisional application) is filed during the pendency of the

application, it will be necessary for the applicant to file a petition

under Sec. 1.41(a) (and appropriate fee) to name the inventor(s). No

explanation (other than that the paper is supplying or changing the

name(s) of the inventor(s)) or showing of facts concerning the

inventorship or any delay in naming the inventorship is required or

desired in a petition under Sec. 1.41(a). The petition fee is required

to cover (or defray in a provisional application) the costs of updating

the Office's records for the application.

Where no inventor(s) is named on filing, the Office requests that

an identifying name be submitted for the application. The use of very

short identifiers should be avoided to prevent confusion. Without

supplying at least a unique identifying name 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 should be specific, alphanumeric characters

of reasonable length, and should 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

include the name of the person(s) believed to be the inventor for

identification purposes. Failure to apprise the Office of the

application identifier being used may 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.

As any inventor(s) named in the original application papers is

considered to be the inventor(s) only when no oath or declaration under

Sec. 1.63 is filed in a nonprovisional application or cover sheet under

Sec. 1.51(c)(1) filed in a provisional application, the recitation of

the inventorship in an application submitted under Sec. 1.53 (b) or (d)

without an executed oath or declaration or cover sheet, respectively,

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. 1.41 or 1.48.

Comment 7: One comment noted that when an application is filed only

an alphanumeric identifier may be used, which would of necessity

require a correction of inventorship, and questioned how a verified

statement under Sec. 1.48(a) could be filed as there would be no person

to sign such statement, whether the Office will require that the

name(s) of the inventor(s) be submitted within a specified period, and

whether the filing date will be lost if the name(s) of the inventor(s)

is not submitted within such period.

Response: The name(s) of the inventor(s) in a nonprovisional

application are provided in the oath or declaration under Sec. 1.63

(Sec. 1.41(a)(2)) and the name(s) of the inventor(s) in a provisional

application are provided in the cover sheet (Sec. 1.41(a)(3)). Thus, an

application filed without the name(s) of the inventor(s) must also have

been filed without an oath or declaration under Sec. 1.63

(nonprovisional) or cover sheet (provisional).

The Office will set a time period in a nonprovisional application

filed without an oath or declaration under Sec. 1.63 for the filing of

such an oath or declaration (Sec. 1.53(f)). The Office will set a time

period in a provisional application filed without a cover sheet for the

filing of such cover sheet (Sec. 1.53(g)). The subsequently filed oath

or declaration or cover sheet will

[[Page 53137]]

provide the name(s) of the inventor(s). No petition under Sec. 1.48(a)

would be required where there was an alphanumeric identifier (and not a

name of a person) or where the person(s) set forth as the inventor(s)

was incorrect.

In the event that an oath or declaration or cover sheet is not

timely filed, the application will become abandoned and the

inventorship will be considered to be the inventor(s) named in the

original application papers. The failure to timely file an oath or

declaration, cover sheet, or the name(s) of the inventor(s) is not a

filing date issue.

Comment 8: One comment thought that the proposed change eliminating

the need to identify any inventor would lead to sloppy filing

procedures and that it should in almost all cases be possible for

practitioners to correctly identify the inventors at the time of

filing.

Response: Experience has demonstrated that a significant number of

applications filed under Sec. 1.53(b) without an executed oath or

declaration have been filed with incorrect inventorships with

explanations running from ``there was no time to investigate the

inventorship'' to ``the inventors contacted either did not understand

the inventorship requirements under U.S. patent law or did not

appreciate that the claims as filed included or did not include the

contribution of the omitted or erroneously added inventor.''

Additionally, Office experience is that while almost all Sec. 1.48(a)

petitions concerning such matters are eventually granted, only a small

percentage are granted on the initial petition thereby causing a

prolonged prosecution period, which is undesirable in view of the

amendment to 35 U.S.C. 154 contained in the Uruguay Round Agreements

Act (URAA), Pub. L. 103-465, 108 Stat. 4809 (1994).

Section 1.47

Section 1.47 paragraphs (a) and (b) are amended, pursuant to 35

U.S.C. 116 and 35 U.S.C 118, to provide for publication in the Official

Gazette of a notice of filing for all applications, except for

continued prosecution applications under Sec. 1.53(d), 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,

after grant of the Sec. 1.47 petition, will include: The application

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

inventor(s). Letters returned as undeliverable are difficult to match

with the related application file, and when matched with the file, the

applications are burdensome to flag as requiring further action by the

Office. Accordingly, the return of letters is not a desirable means of

triggering publication of a notice to a nonsigning inventor as to the

filing of the application. Furthermore, when a returned letter is used

as such a trigger, another review of the application must be made for

returned correspondence. As the best time for review of returned

letters is after allowance, but before issuance, of an application,

processing of the application would be delayed and done at a time that

could be best used for printing related processing requirements.

Printing of notice of the filing of all applications wherein Sec. 1.47

status is granted does not require any such review to be made. In order

to best balance the obligation of providing notice to inventors and

efficient processing of applications, notice in the Official Gazette of

the filing of Sec. 1.47 applications will be prepared essentially at

the same time that the letter notice is directly sent to the nonsigning

inventor.

Paragraphs (a) and (b) of this section are also amended to exclude

the filing of continued prosecution applications under Sec. 1.53(d)

from the notice requirement.

Section 1.47 is also amended for clarification purposes. A

reference to an ``omitted inventor'' in Sec. 1.47(a) is replaced with

``nonsigning inventor.'' The statements in Sec. 1.47 paragraphs (a) and

(b) that a patent will be granted upon a satisfactory showing to the

Commissioner are deleted as unnecessary. Section 1.47(b) is amended to

clarify that it applies only where none of the inventors are willing or

can be found to sign the oath or declaration by substitution of ``an

inventor'' by ``all the inventors.'' The use of ``must state'' in

regard to the last known address is 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 is

deleted as redundant in view of the requirement appearing earlier in

Sec. 1.47(b) calling for ``proof of pertinent facts.''

Comment 9: One comment believed that the amendment to Sec. 1.47(b)

results in a change in practice permitting an assignee to proceed

thereunder only where all the inventors refuse to sign, and that the

assignee should not be precluded from making the required declaration

where only one inventor refuses to cooperate as the other inventors may

not have personal knowledge of the facts.

Response: While the specific language of Sec. 1.47(b) is amended to

recite the condition that ``all the inventors refuse to execute an

application'' the prior use of the term ``inventor'' was intended to

mean and was interpreted as meaning all inventors. See MPEP 409.03(b).

Accordingly, the language clarification is not a change in practice.

Although it is unclear as to what particular ``facts'' the comment

is addressed to that the other inventors would not have personal

knowledge of, facts as to the inventorship of the noncooperating

inventor would better lie with the other inventors who are after all

required to be joint inventors, 35 U.S.C. 116, and therefore the other

inventors should have the best knowledge of the facts required for a

declaration under Sec. 1.63. Any declaration of facts, in support of

the petition, to show, e.g., that an inventor has refused to sign a

declaration after having been given an opportunity to do so, should be

made by someone with first-hand knowledge of the events, such as the

attorney who presented the inventor with the application papers.

Section 1.48

Section 1.48 provides for correction of inventorship in an

application (other than a reissue application). Section 1.324 provides

for correction of inventorship in a patent. Sections 1.171 and 1.175

provide for correction of inventorship in a patent via a reissue

application.

Section 1.48 is amended in its title to clarify that the section

concerns patent applications, other than reissue applications, and not

patents. Where a patent names an incorrect inventive entity, the

inventorship error may be corrected by reissue. See MPEP 1402. Where a

reissue application names an incorrect inventive entity in the executed

reissue oath or declaration (whether the reissue application is filed

for the sole purpose or in-part to correct the inventorship, or is

filed for purposes other than correction of the inventorship), a new

reissue oath or declaration in compliance with Sec. 1.175 may be

submitted with the correct inventorship without a petition under

Sec. 1.48. This is because it is the inventorship of the patent being

reissued that is being corrected (via a reissue application).

35 U.S.C. 251, para. 3, provides that the provisions of title 35,

U.S.C., relating to applications apply to reissue applications. 35

U.S.C. 116, para. 3, authorizes the Commissioner to permit correction

of inventorship in an application under such terms as the Commissioner

prescribes. The

[[Page 53138]]

Commissioner has determined that correction of inventorship in a

reissue application may be accomplished under 35 U.S.C. 251 via the

reissue oath or declaration, without resort to a petition under

Sec. 1.48. Therefore, Sec. 1.48 has been amended to specifically

exclude its applicability to correction of inventorship in a reissue

application.

Section 1.48(a) will 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 amended to

apply only to correction of inventor or inventors, in applications,

other than reissue applications, from that named in an originally filed

executed oath or declaration and not to the naming of inventors or

others for identification purposes under Sec. 1.41. The statement to be

submitted will 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 requirement that any amendment of the

inventorship under Sec. 1.48(a) be ``diligently'' made has been

removed. The applicability of a rejection under 35 U.S.C. 102(f) or (g)

against an application with the wrong inventorship set forth therein

and any patent that would issue thereon is a sufficient motivation for

prompt correction of the inventorship without the need for a separate

requirement for diligence.

Comment 10: Two comments expressed opposition to deletion of the

diligence requirement in Sec. 1.48 paragraphs (a) through (c) in that

removal thereof would seem to promote delay in correction of the

inventorship and decrease the importance of having the correct

inventorship.

Response: In addition to the motivation noted in the explanation of

the rules for not allowing a patent to issue with improper

inventorship, the criteria for correction of the inventorship becomes

more restrictive subsequent to issuance under Sec. 1.324 (having a

statutory basis under 35 U.S.C. 256) than under Sec. 1.48(a) (having a

statutory basis under 35 U.S.C. 116). 35 U.S.C. 256 requires

participation by all the parties including each original named

inventor, which participation may be harder to obtain after the patent

has issued. Petitions under Sec. 1.48(a) filed earlier while the

application is pending may seek waiver under Sec. 1.183 of

participation of some of the parties needed to participate.

Additionally, petitions under Sec. 1.48 in pending applications are not

entered as a matter of right in rejected (the criteria of Sec. 1.116

applies) or allowed (the criteria of Sec. 1.312 applies) applications.

See Sec. 1.48(a) and MPEP 201.03.

A clarifying reference to Sec. 1.634 is 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 requires 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 requirement is deleted. Additionally, the persons from whom

a statement is required now includes any person who through error was

not named 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 is amended to remove the requirement that the

statement be verified in accordance with the change to Secs. 1.4(d)(2)

and 10.18.

Comment 11: One comment opposed the removal of the Office from

examining the issue of inventorship as substantive law invalidates

patents that have issued in the names of incorrect inventors and the

Office is charged with the duty of examining applications for the

purpose of denying issue to those applications that do not meet the

standards of patentability. Where an oath has originally been filed

asserting the proper inventor is one entity and a subsequent paper

asserts that the proper inventor is another, under such circumstances

``the facts are inherently suspect'' and an investigation by the Office

is warranted and required by statute.

Response: The amendments to Sec. 1.48 have otherwise received

overwhelming support.

The Office has pursued the existence of improper inventorship in

applications by rejection under 35 U.S.C. 102(f) or (g) and will

continue to do so independent of the change in the verified statement

requirements under Sec. 1.48 paragraphs (a) or (c). A request to change

inventorship, however, often requested by the current inventors or

assignee on their own initiative is not seen to be inherently fraught

with deceptive intent as to warrant a close and detailed examination

absent more. A statement that the error was made without deceptive

intent is seen to be a sufficient investigation complying with the

statutory requirement under 35 U.S.C. 116, particularly as most

petitions are eventually granted or an application can be refiled

naming the new desired inventive entity. Refiling of the application to

change the inventorship will not cause the Office, absent more, to

initiate an investigation as to the correct inventorship or cause a

rejection under 35 U.S.C. 102(f) or (g) to be made. Additionally, it

should be noted that the Office views a petition under Sec. 1.48 to be

a procedural matter and not to represent a substantive determination as

to the actual inventorship. See MPEP 201.03, Verified Statement of

Facts.

For those situations where there was deceptive intent, the Office

is lacking certain necessary tools for a thorough inquiry (e.g.,

subpoena authority) to ascertain the truth thereof (as in other

situations under Secs. 1.28 and 1.56). However, the inquiry cannot be

waived by the Office due to the statutory requirement under 35 U.S.C.

116. There is no other reasonable course of action than to accept as an

explanation for the execution of a Sec. 1.63 oath or declaration

setting forth an erroneous inventive entity that the inventor did not

remember the contribution of the omitted inventor at the time the oath

or declaration was executed (absent subpoena power and inter parties

hearings), and therefore further inquiries into the matter other than a

statement of lack of deceptive intent are a waste of Office resources.

Comment 12: One comment suggested that in limiting the submission

of a verified statement of facts to only the parties being added or

deleted as inventors, agreement of the original named inventors should

also be obtained as is currently done when verified statements of facts

from all the original named inventors are required.

Response: Agreement or acquiescence of the original named

inventors, to the extent that they remain as inventors, to the new

inventorship will be obtained through the retained requirement that the

actual inventive entity complete a new oath or declaration under

Sec. 1.63, which must set forth the new inventive entity. Additionally,

through the rule changes to this section and Secs. 1.28 and 1.175 the

Office is decreasing its investigation of claims relating to a lack of

deceptive intent. The remaining purpose of these rules is to force the

applicant(s) to merely make an assertion as to a lack of deceptive

intent thereby permitting subsequent reviewers (tribunals or otherwise)

to determine, in light of all the available facts, whether the

applicant(s) complied with the statute.

Section 1.48(a)(2) is 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

[[Page 53139]]

each actual inventor. Section 1.47 is only 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) is 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 Sec. 1.48(a). Section 1.48(a)(4) is also

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) is also amended to remove the requirement that a

petition thereunder be diligently filed. The applicability of a

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

the wrong inventorship set forth therein and any patent that would

issue thereon is sufficient motivation for prompt correction of the

inventorship without the need for a separate requirement for diligence.

Section 1.48(b) is amended to have a clarifying reference to

Sec. 1.634 added for instances when inventorship correction is

necessary during an interference.

Comment 13: A comment noted that the literal wording of

Sec. 1.48(b) permits correction thereunder only where the correct

inventors were named on filing thereby excluding correction under

Sec. 1.48(b) where an incorrect inventorship was named on filing that

was subsequently corrected under Sec. 1.48(a) and, subsequent to the

correction prosecution of the application, required additional

correction under Sec. 1.48(b).

Response: The comment is accepted and Sec. 1.48(b) has been

modified to delete ``when filed'' after ``nonprovisional application''

for clarification purposes. Additionally, the term ``originally'' in

the first sentence of paragraph (b) has been replaced with

``currently.''

Section 1.48(c) is amended so that a petition thereunder no longer

needs to meet the current requirements of Sec. 1.48(a), which are also

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 is 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 paragraphs (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 previous requirement for

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

not 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.

Section 1.48(c)(2) is amended to 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 is only 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) is 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. A citation to Sec. 3.73(b) is presented.

Section 1.48(d) is 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) is also clarified to specify that 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.

Section 1.48(d)(1) is also amended to remove the requirement that

the statement be verified in accordance with the change to

Secs. 1.4(d)(2) and 10.18.

Section 1.48(e)(1) is 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,'' requiring only a

statement that the inventorship error occurred without deceptive

intent. Paragraph (e)(1) is also amended to remove the requirement that

the statement be verified in accordance with the change to

Secs. 1.4(d)(2) and 10.18. 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

(35 U.S.C. 111(b)(5)), 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 subsequently filed nonprovisional application.

Section 1.48(e)(3) is 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. A reference to Sec. 3.73(b) is added.

Section 1.48(f) is added to provide that the later filing of an

executed oath or declaration (or cover sheet (Sec. 1.51(c)(1)) in a

provisional application) during the pendency of the application would

act to correct the inventorship without a specific petition for such

correction and will be used to further process the application

notwithstanding any inventorship or other identification name earlier

presented.

Section 1.48(g) is added to specifically recognize that the Office

may require such other information as may be deemed appropriate under

the

[[Page 53140]]

particular circumstances surrounding a correction of the inventorship.

Section 1.51

Section 1.51, paragraphs (a)(1) and (a)(2), are re-written as

Sec. 1.51, paragraphs (b) and (c), respectively, and Sec. 1.51(b) is

re-written as Sec. 1.51(d). Section 1.51(c) covering the use of an

authorization to charge a deposit account is removed as unnecessary in

view of Sec. 1.25(b).

No comments were received regarding the proposed change to

Sec. 1.51.

Section 1.52

Section 1.52, paragraphs (a) and (d), are amended to remove the

requirement that the translation be verified in accordance with the

change to Secs. 1.4(d)(2) and 10.18. Section 1.52, paragraph (c), is

amended to remove the reference to Secs. 1.123 through 1.125 to: (1)

reflect a transfer of material from Secs. 1.123 and 1.124 to

Sec. 1.121; (2) further clarify that Sec. 1.125 is not a vehicle

amendment of an application; and (3) to clarify that alterations to

application papers may be made on, as well as before, the signing of

the oath or declaration. Section 1.52, paragraphs (a) and (d), are also

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

offered is an accurate translation, as in Sec. 1.69(b).

Comment 14: Two comments were received asking whether the attorney

can sign the statement that the translation is accurate, and how much

firsthand knowledge does a practitioner need to know that the

translation is accurate.

Response: The Office will accept a statement that the translation

is accurate from any party. However, any party signing such statement

must keep in mind the averments that are made under Secs. 1.4(d) and

10.18. The actual firsthand knowledge needed by a practitioner is that

amount of knowledge to comply with the averments in Secs. 1.4(d) and

10.18.

Comment 15: A comment questioned whether there is any difference

between the previous language of ``verified translation'' and the

present language of ``accurate translation.''

Response: The previous language was directed at a verification that

the translation is accurate. A verification requirement is now

unnecessary due to the amendments to Secs. 1.4(d) and 10.18. Thus,

Sec. 1.52(d) is amended to include the more direct term ``accurate.''

Section 1.53

Section 1.53 is amended to include headings for each paragraph for

purposes of clarity.

Section 1.53(a) is amended to state that ``[a]ny papers received in

the Patent and Trademark Office which purport to be an application for

a patent will be assigned an application number for identification

purposes.'' That is, the Office will refer to papers purporting to be

an application for a patent as an ``application'' and assign such

``application'' an application number for identification purposes. This

reference, however, does not imply that such papers meet the

requirements in Sec. 1.53(b) to be accorded a filing date or constitute

an ``application'' within the meaning of 35 U.S.C. 111.

Section 1.53(b) is amended to provide that: (1) the filing date of

an application for patent filed under Sec. 1.53(b) is the date on which

a specification as prescribed by 35 U.S.C. 112 containing a description

pursuant to Sec. 1.71 and at least one claim pursuant to Sec. 1.75, and

any drawing required by Sec. 1.81(a) are filed in the Office; (2) no

new matter may be introduced into an application after its filing date;

(3) a continuation or divisional application filed by all or by fewer

than all of the inventors named in a prior nonprovisional application

may be filed under Sec. 1.53(b) or (d); and (4) a continuation or

divisional application naming an inventor not named in the prior

nonprovisional application or a continuation-in-part application must

be filed under Sec. 1.53(b).

Section 1.53(c) is amended to provide for provisional applications

(formerly provided for in Sec. 1.53(b)(2)). Section 1.53(c) includes

the language of former Sec. 1.53(b)(2), with certain changes for

purposes of clarity. Section 1.53(c)(i), for example, includes language

requiring either the provisional application cover sheet required by

Sec. 1.51(c)(1) or a cover letter identifying the application as a

provisional application. The cover letter may be an application

transmittal letter or some other paper identifying the accompanying

papers as a provisional application.

Section 1.53(d) is amended to provide for continued prosecution

applications. Section 1.53(d)(1) provides that a continuation or

divisional application, but not a continuation-in-part, of a prior

nonprovisional application may be filed as a continued prosecution

application under Sec. 1.53(d), subject to the conditions specified in

paragraph (d)(1)(i) and (d)(1)(ii). That is, an application under

Sec. 1.53(d) cannot be a continuation-in-part application, and the

prior application cannot be a provisional application.

Section 1.53(d)(1)(i) specifies that the prior application be

either: (1) Complete as defined by Sec. 1.51(b) and filed on or after

June 8, 1995; or (2) the national stage of an international application

in compliance with 35 U.S.C. 371 and filed on or after June 8, 1995.

The phrase ``prior'' application in Sec. 1.53(d)(1) means the

application immediately prior to the continued prosecution application

under Sec. 1.53(d), in that a continued prosecution application under

Sec. 1.53(d) may claim the benefit under 35 U.S.C. 120, 121, or 365(c)

of applications filed prior to June 8, 1995 so long as the application

that is immediately prior to the continued prosecution application

under Sec. 1.53(d) was filed on or after June 8, 1995.

Section 1.53(d)(1)(ii) specifies that the application under

Sec. 1.53(d) be filed before the earliest of: (1) Payment of the issue

fee on the prior application, unless a petition under Sec. 1.313(b)(5)

is granted in the prior application; (2) abandonment of the prior

application; or (3) termination of proceedings on the prior

application.

Section 1.53(d)(2) provides that the filing date of a continued

prosecution application is the date on which a request on a separate

paper for an application under Sec. 1.53(d) is filed. That is, a

request for an application under Sec. 1.53(d) cannot be submitted

within papers filed for another purpose (e.g., the filing of a

``conditional'' request for a continued prosecution application within

an amendment after final for the prior application is an improper

request for a continued prosecution application under Sec. 1.53(d)).

In addition, a ``conditional'' request for a continued prosecution

application will not be permitted. Any ``conditional'' request for a

continued prosecution application submitted (as a separate paper) with

an amendment after final in an application will be treated as an

unconditional request for a continued prosecution application of such

application. This will result (by operation of Sec. 1.53(d)(2)(v)) in

the abandonment of such (prior) application, and (if so instructed in

the request for a continued prosecution application) the amendment

after final in the prior application will be treated as a preliminary

amendment in the continued prosecution application.

Section 1.53(d)(2) further provides that an application filed under

Sec. 1.53(d): (1) Must identify the prior application

(Sec. 1.53(d)(i)); (2) discloses and claims only subject matter

disclosed in the prior application (i.e., is a continuation or

divisional, but not a continuation-in-part) (Sec. 1.53(d)(1)(ii)); (3)

names as inventors the same inventors named in the prior application on

the date the application under Sec. 1.53(d) was filed, except as

provided in Sec. 1.53(d)(4)

[[Page 53141]]

(Sec. 1.53(d)(2)(iii)); (4) includes the request for an application

under Sec. 1.53(d), will utilize the file jacket and contents of the

prior application, including the specification, drawings and oath or

declaration, from the prior application to constitute the new

application, and will be assigned the application number of the prior

application for identification purposes (Sec. 1.53(d)(2)(iv)); and (5)

is a request to expressly abandon the prior application as of the

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

(Sec. 1.53(d)(2)(v)).

Section 1.53(d)(3) provides that the filing fee for a continued

prosecution application filed under Sec. 1.53(d) is: (1) The basic

filing fee as set forth in Sec. 1.16; and (2) any additional Sec. 1.16

fee due based on the number of claims remaining in the application

after entry of any amendment accompanying the request for an

application under Sec. 1.53(d) and entry of any amendments under

Sec. 1.116 not entered in the prior application which applicant has

requested to be entered in the continued prosecution application. See

35 U.S.C. 41(a) (1)-(4).

Section 1.53(d)(4) provides that an application filed under

Sec. 1.53(d) may be filed by fewer than all the inventors named in the

prior application, provided that the request for an application under

Sec. 1.53(d) when filed is accompanied by a statement requesting

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

inventors of the invention being claimed in the new application, and

that no person may be named as an inventor in an application filed

under Sec. 1.53(d) who was not named as an inventor in the prior

application on the date the application under Sec. 1.53(d) was filed,

except by way of a petition under Sec. 1.48. Thus, an application under

Sec. 1.53(d) must name as inventors either the same as

(Sec. 1.53(d)(2)(iii)) or fewer than all of (Sec. 1.53(d)(4)) the

inventors named in the prior application. A request for an application

under Sec. 1.53(d) purporting to name as an inventor a person not named

as an inventor in the prior application (even if accompanied by a new

oath or declaration under Sec. 1.63 listing that person as an inventor)

will be treated as naming the same inventors named in the prior

application (Sec. 1.53(d)(2)(iii)).

Section 1.53(d)(5) provides that: (1) Any new change must be made

in the form of an amendment to the prior application; (2) no amendment

in an application under Sec. 1.53(d) (a continued prosecution

application) may introduce new matter or matter that would have been

new matter in the prior application; and (3) any new specification

filed with the request for an application under Sec. 1.53(d) will not

be considered part of the original application papers, but will be

treated as a substitute specification in accordance with Sec. 1.125.

Pursuant to the provisions of Sec. 1.53(d)(5), where applicant desires

entry of an amendment in the application under Sec. 1.53(d) that was

previously denied entry under Sec. 1.116 in the prior application, the

applicant must request its entry (and pay any additional claims fee

required by Sec. 1.53(d)(3)(ii)) in the application under Sec. 1.53(d)

prior to action by the Office in the application under Sec. 1.53(d).

Any amendment submitted with the request for an application under

Sec. 1.53(d) that seeks to add matter that would have been new matter

in the prior application will be objected to under Sec. 1.53(d), and

the applicant will be required to cancel the subject matter that would

have been new matter in the prior application.

Section 1.53(d)(6) provides that the filing of a continued

prosecution application under Sec. 1.53(d) will be construed to include

a waiver of confidentiality 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, copies of, or information

concerning either the prior application or any continuing application

filed under the provisions of this paragraph may be given similar

access to, copies of, or similar information concerning, the other

application(s) in the application file.

Section 1.53(d)(7) provides that a request for an application under

Sec. 1.53(d) is a specific reference under 35 U.S.C. 120 to every

application assigned the application number identified in such request,

and that no amendment in a continued prosecution application under

Sec. 1.53(d) shall delete this specific reference to any prior

application. That is, other than the identification of the prior

application in the request required by Sec. 1.53(d) for a continued

prosecution application, a continued prosecution application needs no

further identification of or reference to the prior application (or any

prior application assigned the application number of such application

under Sec. 1.53(d)) under 35 U.S.C. 120 and Sec. 1.78(a)(2).

Section 1.53(d)(8) provides that in addition to identifying the

application number of the prior application, applicant is urged to

furnish in the request for an application under Sec. 1.53(d) the

following information relating to the prior application to the best of

his or her ability: (1) Title of invention; (2) name of applicant(s);

and (3) correspondence address.

Section 1.53(d)(9) provides that: (1) Envelopes containing only

requests and fees for filing an application under Sec. 1.53(d) should

be marked ``Box CPA'' and (2) requests for an application under

Sec. 1.53(d) filed by facsimile transmission should be clearly marked

``Box CPA.''

Section 1.53(e)(1) provides that if an application deposited under

Sec. 1.53 paragraphs (b), (c), or (d) does not meet the respective

requirements in Sec. 1.53 paragraphs (b), (c), or (d) to be entitled to

a filing date, applicant will be so notified, if a correspondence

address has been provided, and given a time period within which to

correct the filing error.

Section 1.53(e)(2) provides that: (1) Any request for review of a

notification pursuant to Sec. 1.53(e)(1), 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 Sec. 1.53(e); (2)

any petition under Sec. 1.53(e) must be accompanied by the fee set

forth in Sec. 1.17(i) in an application filed under Sec. 1.53

paragraphs (b) or (d), and the fee set forth in Sec. 1.17(q) in an

application filed under Sec. 1.53(c); and (3) in 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 (e)(1) of this section will be the date the

filing error is corrected.

Section 1.53(e)(3) provides that if an applicant is notified of a

filing error pursuant to Sec. 1.53(e)(1), but fails to correct the

filing error within the given time period or otherwise timely

(Sec. 1.181(f)) take action pursuant to Sec. 1.53(e)(2), proceedings in

the application will be considered terminated, and that where

proceedings in an application are terminated pursuant to

Sec. 1.53(e)(3), the application may be disposed of, and any filing

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

refunded.

Section 1.53(f) is amended to include the language of former

Sec. 1.53(d)(1) and to provide that the oath or declaration required

for a continuation or divisional application under Sec. 1.53(b) may be

a copy of the executed oath or declaration filed in the prior

application (under Sec. 1.63(d)).

Section 1.53 paragraphs (g), (h), (i), and (j) are added and

include the language of former Sec. 1.53 paragraphs (d)(2), (e)(1),

(e)(2), and (f), respectively.

Comment 16: The majority of the comments supported the deletion of

Secs. 1.60 and 1.62 in favor of the proposed amendment to Sec. 1.53.

[[Page 53142]]

Response: The Office is deleting Secs. 1.60 and 1.62 in favor of an

amended Sec. 1.53.

Comment 17: Several comments suggested that the Office adopt a

continued prosecution procedure for applications filed on or after June

8, 1995 similar to the practice set forth in Sec. 1.129(a), rather than

the continued prosecution application practice set forth in

Sec. 1.53(d).

Response: Section 532(a)(2)(A) of Pub. L. 103-465 provides specific

authorization for the practice set forth in Sec. 1.129(a). There is

currently no statutory authority for the Office to simply charge the

patent fees set forth in 35 U.S.C. 41(a) for further examination of an

application. 35 U.S.C. 41(d) would authorize the Office to further

examine an application for a fee that recovers the estimated average

cost to the Office of such further examination; however, as 35 U.S.C.

41(h) is applicable only to fees under 35 U.S.C. 41 (a) and (b), the

Office would not be authorized to provide a small entity reduction in

regard to such fee. Thus, the only mechanism by which the Office may

provide further examination for a fee to which the small entity

reduction is applicable is via a continuing application.

Section 209 of H.R. 3460, 104th Cong., 2d Sess. (1996), would have

provided statutory authority for the further reexamination of an

application for a fee to which the small entity reduction was

applicable. Section 209 of H.R. 400, 105th Cong., 1st Sess. (1997), if

enacted, will provide statutory authority for the further reexamination

of an application for a fee to which the small entity reduction will be

applicable.

Comment 18: One comment stated that the combination of Secs. 1.53,

1.60, and 1.62 into a single Sec. 1.53 was complex and confusing.

Another comment suggested that Sec. 1.53 be split into a number of

sections, or that headings be used in Sec. 1.53 in the manner that

headings are used in Secs. 1.84 and 1.96.

Response: Placing the provisions of Sec. 1.53 into multiple

sections, rather than multiple paragraphs of a single section, would

not result in a simplification of its provisions. The Office considers

it appropriate to place the filing provisions concerning all

applications (nonprovisional, provisional, and continued prosecution)

into a single section to reduce the confusion as to the filing

requirements for any application for patent. Section 1.53 as adopted

includes headings in each paragraph of Sec. 1.53 to indicate the

subject to which each of these paragraphs pertains.

Comment 19: One comment suggested amending Sec. 1.53 to require

applicants to indicate changes to the disclosure in a continuation or

divisional application.

Response: The suggestion is not adopted. The Office did not propose

to amend Sec. 1.53 to require applicants to indicate changes to the

disclosure in any continuing application. Thus, adopting a change to

impose this additional burden on an applicant is not considered

appropriate in this Final Rule.

Comment 20: One comment suggested that the Office permit applicants

to file a statement requesting deletion of an inventor in a

continuation or divisional application any time prior to or coincident

with the mailing of an issue fee payment. The comment questioned

whether the time period in Sec. 1.53(e)(1) addresses this issue.

Response: Unless a statement requesting the deletion of the names

of the person or persons who are not inventors in the continuation or

divisional application accompanies the copy of the executed oath or

declaration submitted in accordance with Sec. 1.63(d) in an application

filed pursuant to Sec. 1.53(b), or accompanies the request for an

application under Sec. 1.53(d) in an application filed pursuant to

Sec. 1.53(d), the inventorship of the continuation or divisional

application filed under Sec. 1.53(b) using a copy of the oath or

declaration of the prior application pursuant to Sec. 1.63(d) or filed

under Sec. 1.53(d) will be considered identical to that in the prior

application, and correction of the inventorship (if appropriate) must

be by way of Sec. 1.48. Identification of the inventorship is necessary

to the examination of an application (e.g., 35 U.S.C. 102(f) and (g)).

As such, the Office must require identification of the inventorship

prior to examination of an application.

Section 1.53(e)(1) applies in those instances in which papers filed

as an application under Sec. 1.53 (b), (c), or (d) do not meet the

respective requirements of Sec. 1.53 (b), (c), or (d) to be entitled to

a filing date. Submitting an oath or declaration is not a filing date

issue, and naming the inventors is no longer a filing date issue. Thus,

the provisions of Sec. 1.53(e) do not apply to the filing of a

statement requesting deletion of an inventor in a continuation or

divisional application.

Comment 21: One comment questioned whether Sec. 1.53(d) applies

only to applications filed on or after June 8, 1995, and questioned

whether Sec. 1.53(d) should be made applicable to pending applications

filed prior to June 8, 1995. The comment also questioned the

relationship between Sec. 1.129(a) and Sec. 1.53(d).

Response: Section Sec. 1.53(d), by its terms, permits the filing of

a continuation or divisional thereunder of only a nonprovisional

application that, inter alia, is either: (1) Complete as defined by

Sec. 1.51(b) and filed on or after June 8, 1995 or; (2) resulted from

entry into the national stage of an international application in

compliance with 35 U.S.C. 371 filed on or after June 8, 1995. While

Sec. 1.53(d) and Sec. 1.129(a) both provide for the continued

prosecution of an application, these sections are distinct in that they

apply to a virtually mutually exclusive class of applications and have

separate requirements (e.g., a request for a Sec. 1.53(d) application

may be filed subsequent to the filing of an appeal brief, so long as

the request is filed before the earliest of: (1) Payment of the issue

fee on the prior application, unless a petition under Sec. 1.313(b)(5)

is granted in the prior application; (2) abandonment of the prior

application; or (3) termination of proceedings on the prior

application).

Comment 22: One comment suggested that the rules of practice permit

the execution of copies of an oath or declaration by fewer than all of

the inventors, without cross-reference to the other copies to

facilitate contemporaneous executions by geographically separated

inventors.

Response: The suggestion is not adopted. Section 1.63(a)(3)

requires that an oath (or declaration), inter alia, identify each

inventor. The rules of practice permit inventors to execute separate

oaths (or declarations), so long as each oath (or declaration) sets

forth all of the inventors (the necessary cross-reference). That is,

Sec. 1.63(a)(3) prohibits the execution of separate oaths (or

declarations) in which each oath (or declaration) sets forth only the

name of the executing inventor. An amendment to the rules of practice

to permit an inventor to execute an oath or declaration that does not

set forth each inventor would not only lead to confusion as to the

inventorship of an application, but would be inconsistent with the

requirement in 35 U.S.C. 115 that the applicant make an oath (or

declaration) that the applicant believes himself (or herself) to be the

original and first inventor of the subject matter for which a patent is

sought, as the oaths or declarations would conflict as to the

inventorship of the application.

Comment 23: Several comments suggested that the statement required

under 35 U.S.C. 120 in a continued prosecution application will be

confusing as the continued prosecution

[[Page 53143]]

application will have the same application number as the prior

application. One comment indicated that this will cause confusion: (1)

As to which application is being referenced in a 35 U.S.C. 120

statement in the divisional application when a divisional application

under Sec. 1.53(b) and a continued prosecution application filed under

Sec. 1.53(d) are filed from the same prior application; and (2) in

docketing applications as most commercially available software identify

applications by application number. Another comment questioned what

sentence was required pursuant to Sec. 1.78(a)(2) in a continued

prosecution application.

Response: 35 U.S.C. 120 provides that an application may obtain the

benefit of the filing date of an earlier filed application if, inter

alia, the application ``contains or is amended to contain a specific

reference to the earlier filed application.'' Section 1.78(a) requires

that this specific reference be in the first sentence of the

specification and identify each earlier filed application by

application number or international application number and

international filing date and relationship of the applications. Thus,

while a ``specific reference to the earlier filed application'' is a

requirement of statute (35 U.S.C. 120), the particulars of this

specific reference (by application number, filing date, and

relationship) is a requirement of regulation (Sec. 1.78(a)), not the

patent statute.

The purpose of the ``specific reference'' requirement of 35 U.S.C.

120 is to provide notice to the public of the filing date upon which a

patentee may rely to support the validity of the patent:

[35 U.S.C. 120] embodies an important public policy. The

information required to be disclosed is information that would

enable a person searching the records of the Patent Office to

determine with a minimum of effort the exact filing date upon which

a patent applicant is relying to support the validity of his

application or the validity of a patent issued on the basis of one

of a series of applications. In cases such as this, in which two or

more applications have been filed and the validity of a patent rests

upon the filing date of an application other than that upon which

the patent was issued, a person, even if he had conducted a search

of the Patent Office records, could unwittingly subject himself to

exactly this type of infringement suit unless the later application

adequately put him on notice that the applicant was relying upon a

filing date different from that stated in the later application.

Sampson v. Ampex Corp., 463 F.2d 1042, 1045, 174 USPQ 417, 419 (2d

Cir. 1972); see also Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405

F.2d 90, 93, 160 USPQ 177, 179 (7th Cir. 1968)(''Congress may well have

thought that [35 U.S.C.] 120 was necessary to eliminate the burden on

the public to engage in long and expensive search of previous

applications in order to determine the filing date of a later patent *

* *. The inventor is the person best suited to understand the relation

of his applications, and it is no hardship to require him to disclose

this information'').

To reduce the delay in processing a continued prosecution

application, the Office will maintain in its records (e.g., in the

Patent Application Locating and Monitoring (PALM) records for an

application) for identification purposes the application number and

filing date of the prior application. Thus, in a continued prosecution

application, the application number of the continued prosecution

application will be the application number of the prior application,

and the filing date indicated on any patent issuing from a continued

prosecution application will be the filing date of the prior

application (or, in a chain of continued prosecution applications, the

filing date of the application immediately preceding the first

continued prosecution application in the chain). In addition, as a

continued prosecution application will use the file wrapper of the

prior application, the prior application will be available upon

inspection of the continued prosecution application.

Unless excepted from Sec. 1.78(a)(2), the first sentence of a

continued prosecution application would consist of a reference to that

application as a continuation or divisional of an application having

the identical application number and the effective filing date of (the

filing date to be printed on any patent issuing from) the continued

prosecution application. Such a sentence would provide no useful

information to the public.

Therefore, Sec. 1.53(d)(7) as adopted provides that a request for

an application under Sec. 1.53(d) is a specific reference under 35

U.S.C. 120 to every application assigned the application number

identified in such request, and Sec. 1.78(a)(2) as adopted provides

that the request for a continued prosecution application under

Sec. 1.53(d) is the specific reference under 35 U.S.C. 120 to the prior

application. That is, the continued prosecution application includes

the request for an application under Sec. 1.53(d)

(Sec. 1.53(d)(2)(iv)), and the recitation of the application number of

the prior application in such request (as required by Sec. 1.53(d)) is

the ``specific reference to the earlier filed application'' required by

35 U.S.C. 120. No further amendment to the specification is required by

35 U.S.C. 120 or Sec. 1.78(a) for a continued prosecution application

for such continued prosecution application to contain the required

specific reference to the prior application, as well as any other

application assigned the application number of the prior application

(e.g., in instances in which a continued prosecution application is the

last in a chain of continued prosecution applications).

Where an application claims a benefit under 35 U.S.C. 120 of a

chain of applications, the application must make a reference to the

first (earliest) application and every intermediate application. See

Sampson, 463 F.2d at 1044-45, 174 USPQ at 418-19; Sticker Indus. Supply

Corp., 405 F.2d at 93, 160 USPQ at 179; Hovlid v. Asari, 305 F.2d 747,

751, 134 USPQ 162, 165 (9th Cir. 1962); see also MPEP 201.11. In

addition, every intermediate application must also make a reference to

the first (earliest) application and every application after the first

application and before such intermediate application.

In the situation in which there is a chain of continued prosecution

applications, each continued prosecution application in the chain will,

by operation of Sec. 1.53(d)(7), contain the required specific

reference to its immediate prior application, as well as every other

application assigned the application number identified in such request.

Put simply, a specific reference to a continued prosecution application

by application number and filing date will constitute a specific

reference to: (1) The non-continued prosecution application originally

assigned such application number (the prior application as to the first

continued prosecution application in the chain); and (2) every

continued prosecution application assigned the application number of

such non-continued prosecution application.

Where the non-continued prosecution application originally assigned

such application number itself claims the benefit of a prior

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

Sec. 1.78(a)(2) continues to require that such application contain in

its first sentence a reference to any such prior application(s). As a

continued prosecution application uses the specification of the prior

application, such a specific reference in the prior application (as to

the continued prosecution application) will constitute such a specific

reference in the continued prosecution application, as well as every

continued prosecution application in the event that there is a

[[Page 53144]]

chain of continued prosecution applications.

Where an applicant in an application filed under Sec. 1.53(b) seeks

to claim the benefit of an application filed under Sec. 1.53(d) under

35 U.S.C. 120 or 121 (as a continuation, divisional, or continuation-

in-part), Sec. 1.78(a)(2) requires a reference to the continued

prosecution application by application number in the first sentence of

such application. Section 1.78(a)(2) has been amended to also provide

that ``[t]he identification of an application by application number

under this section is the specific reference required by 35 U.S.C. 120

to every application assigned that application number.'' Thus, where a

referenced continued prosecution application is in a chain of continued

prosecution applications, this reference will constitute a reference

under 35 U.S.C. 120 and Sec. 1.78(a)(2) to every continued prosecution

application in the chain as well as the non-continued prosecution

application originally assigned such application number.

Therefore, regardless of whether an application is filed under

Sec. 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a

continued prosecution application is, by operation of Sec. 1.53(d)(7)

and Sec. 1.78(a)(2), a claim to every application assigned the

application number of such continued prosecution application. In

addition, applicants will not be permitted to choose to delete such a

claim as to certain applications assigned that application number

(e.g., for patent term purposes).

Finally, while it is recognized that using a common application

number (and file wrapper) for a continued prosecution application and

its prior application (which may also be a continued prosecution

application) will necessitate docketing modifications (as well as the

Office's PALM system), the burden of such modifications is outweighed

by the benefits that will result from the elimination of the initial

processing of such applications.

Comment 24: One comment suggested that the phrase ``now refiled''

be used in lieu of ``now abandoned'' to reflect the status of the prior

application.

Response: Under 35 U.S.C. 120, the status of an application is one

of three conditions: (1) pending; (2) patented; or (3) abandoned. See

In re Morganroth, 6 USPQ2d 1802, 1803 (Comm'r Pat. 1988). As the filing

of a continued prosecution application under Sec. 1.53(d) operates to

expressly abandon the prior application under Sec. 1.53(d)(2)(v), the

status of the prior application is appropriately designated as

``abandoned.''

Comment 25: Several comments suggested that the proposed continued

prosecution application practice be made applicable in instances in

which the prior application was filed prior to June 8, 1995, to

expedite the prosecution of such applications.

Response: Permitting the continued prosecution application practice

to be applicable in instances in which the prior application was filed

prior to June 8, 1995, would result in confusion as to whether the

patent issuing from the continued prosecution application is entitled

to the provisions of 35 U.S.C. 154(c). As the continued prosecution

application practice was not in effect prior to June 8, 1995, no patent

issuing from a continued prosecution application is entitled to the

provisions of 35 U.S.C. 154(c).

As discussed supra, the application number of a continued

prosecution application will be the application number of the prior

application, and the filing date indicated on any patent issuing from a

continued prosecution application will be the filing date of the prior

application (or, in a chain of continued prosecution applications, the

filing date of the application immediately preceding the first

continued prosecution application in the chain). Thus, any patent

issuing from a continued prosecution application, where the prior

application was filed prior to June 8, 1995, will indicate that the

filing date of the application for that patent was prior to June 8,

1995, which will confuse the public (and possible the patentee) into

believing that such patent is entitled to the provisions of 35 U.S.C.

154(c).

The Office has implemented Sec. 532(a)(2)(A) of Pub. L. 103-465 in

Sec. 1.129(a) to conclude the examination of applications pending at

least two years as of June 8, 1995, taking into account any reference

made in such application to any earlier filed application under 35

U.S.C. 120, 121, and 365(c). Further examination of any application may

be obtained via the filing of a continuing application under

Sec. 1.53(b). Requiring applications filed prior to June 8, 1995, that

are not eligible for the transitional procedure set forth in

Sec. 1.129(a) to obtain further examination via the filing of a

continuing application under Sec. 1.53(b) is a reasonable requirement

to avoid confusion as to whether a patent issuing from a continued

prosecution (Sec. 1.53(d)) application is entitled to the provisions of

35 U.S.C. 154(c).

Comment 26: One comment suggested that the phrase ``most immediate

prior national application'' rather than ``prior application'' was

confusing. The comment further stated that if the prior application was

one filed under Sec. 1.62, there is no copy in that complete

application of the (oath or) declaration filed in the application under

Sec. 1.62.

Response: The phrase ``most immediate prior national application

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

changed to ``prior application.'' An application under Secs. 1.53(d),

1.60, or 1.62 must ultimately be a continuing application of an

application filed under Sec. 1.53(b). Where the prior application is an

application under Sec. 1.60, the oath or declaration is the copy of the

oath or declaration from the prior application vis-a-vis the

application under Sec. 1.60 submitted in accordance with

Sec. 1.60(b)(2). Where the prior application is an application under

Secs. 1.62 or 1.53(d), the oath or declaration is the oath or

declaration from the prior application vis-a-vis the application under

Secs. 1.62 or 1.53(d). Where there is a chain of applications under

Secs. 1.62 or 1.53(d) preceding the prior application to an application

under Sec. 1.53(d), the oath or declaration of the prior application

will be the oath or declaration of the application under Secs. 1.53 or

1.60 immediately preceding the chain of applications under Secs. 1.62

or 1.53(d), as each application in the chain of applications under

Secs. 1.62 or 1.53(d) utilizes the oath or declaration of the prior

application.

Comment 27: One comment suggested that applications filed under

Sec. 1.53(d) should be taken up as amended applications, rather than as

newly filed applications.

Response: The comment implies that taking up a continued

prosecution application as an amended application may result in the

examiner acting on the application in a more timely manner than if the

application were accounted for as a new application. The matter is

under consideration along with other administrative issues, and a

decision shall be made in due course.

Comment 28: One comment suggested that Sec. 1.129(a) be amended so

as not to be limited to applications under final rejection, such that

an applicant in an application in which a notice of allowance under

Sec. 1.311 has been mailed may obtain entry of an information

disclosure statement without regard to the requirements of

Sec. 1.97(d).

Response: The Notice of Proposed Rulemaking did not propose to

amend Sec. 1.129(a). While the language of Sec. 532(a)(2)(A) of Pub. L.

103-465 does not expressly exclude the further examination of an

application that has been allowed (as opposed to an

[[Page 53145]]

application under a final rejection), Sec. 102(d) of Pub. L. 103-465

provides that ``[t]he statement of administrative action approved by

the Congress under section 101(a) shall be regarded as an authoritative

expression by the United States concerning the interpretation and

application of the Uruguay Round Agreements and this Act in any

judicial proceeding in which a question arises concerning such

interpretation or application.'' The statement of administrative action

specifies that such further examination is to facilitate the completion

of prosecution of applications pending before the Office, and to permit

applicants to present a submission after the Office has issued a final

rejection on an application. See H.R. Rep. 826(i), 103rd Cong., 2nd

Sess. 1005-06, reprinted in 1984 U.S.C.C.A.N. 3773, 4298.

Upon mailing of a notice of allowance under Sec. 1.311, prosecution

of an application before the Office is concluded. The proposed

amendment to obtain further examination pursuant to Sec. 1.129(a) after

allowance would nullify (rather than facilitate) the completion of

prosecution of the above-identified application, and, as such, would be

inconsistent with the purpose for the provisions of Sec. 532(a)(2)(A)

of Pub. L. 103-465.

Comment 29: One comment questioned how the filing of a continued

prosecution application would result in less delay than the filing of a

continuing application under Sec. 1.53(b), as a continued prosecution

application would be subject to pre-examination processing delays.

Response: The Office will not issue a new filing receipt for a

continued prosecution application under Sec. 1.53(d). See Sec. 1.54(b).

By not issuing a filing receipt for a continued prosecution

application, the Office will be able to perform the pre-examination of

any continued prosecution application in the examining group to which

the prior application was assigned. Likewise, Sec. 1.6(d) has been

amended to permit an applicant to file a continued prosecution

application under Sec. 1.53(d) by facsimile, and the use of this means

of filing a continued prosecution application will avoid the delay

inherent in routing an application (or any paper) from the mailroom to

the appropriate examining group. These provisions will enable the

Office to process a continued prosecution application in the manner

that a submission under Sec. 1.129(a) is processed.

Comment 30: One comment questioned whether the filing date of a

continued prosecution application is the filing date for determining

patent term, or is significant only in establishing copendency. Another

comment questioned what filing date was relevant for determining patent

term.

Response: Notwithstanding that a continued prosecution application

is assigned the application number of the prior application, the filing

date of the continued prosecution application is the date on which the

request for such continued prosecution application was filed

(Sec. 1.53(d)). While the filing date of the continued prosecution

application is relevant to establishing the copendency required by 35

U.S.C. 120 and Sec. 1.78(a) between the continued prosecution

application and the prior application, the filing date of a continued

prosecution application will never be relevant to the term under 35

U.S.C. 154(b) of any patent issuing from the continued prosecution

application.

Any continued prosecution application under Sec. 1.53(d) will be

filed on or after June 8, 1995, and will claim the benefit of an

earlier application as a continuation or divisional application.

Section 1.53(d)(7) specifically provides that:

A request for an application under this paragraph is the

specific reference required by 35 U.S.C. 120 to every application

assigned the application number identified in such request. No

amendment in an application under this paragraph shall delete this

specific reference to any prior application.

Thus, an application under Sec. 1.53(d) cannot be amended to delete

the specific reference to the prior application, as well as the

specific reference to any application to which the prior application

contains a specific reference under 35 U.S.C. 120, 121, and 365(c). As

an application under Sec. 1.53(d) will also contain a specific

reference to at least one other application under 35 U.S.C. 120, 121,

and 365(c), the expiration date under 35 U.S.C. 154(b)(2) of any patent

issuing from the application under Sec. 1.53(d) will be based upon the

filing date of the prior application (or the earliest application to

which the prior application contains a specific reference under 35

U.S.C. 120, 121, and 365(c)).

Comment 31: One comment argued that the Office should address not

only the filing requirements for continuing applications, but also the

cause of the filing of continuing applications. The comment

specifically argued that the current second action final practice

should be reevaluated as an applicant no longer has an incentive to

delay the prosecution of an application due to Pub. L. 103-465.

Response: The suggestion is being taken under advisement as part of

a comprehensive effort by the Office to reengineer the entire patent

process. However, it should be noted that any changes to the current

second action final practice to provide additional examination of an

application prior to a final Office action would necessitate a

corresponding increase in patent fees.

Comment 32: One comment suggested that the Office simply eliminate

the ``true copy'' requirement of Sec. 1.60, rather than add new

provisions permitting the use of a copy of the oath or declaration of a

prior application. The comment also suggested that the Office simply

amend Sec. 1.62 to eliminate the requirement that the Office assign a

new application number to the application, rather than add a new

Sec. 1.53(d).

Response: The amendments to Sec. 1.53 do not simply make minor

changes to Secs. 1.60 and 1.62. Sections 1.60 and 1.62 are anachronisms

that have outlived their usefulness. A significant number of

applications filed under Sec. 1.60 do not meet the requirements of

Sec. 1.60 (and, as such are improper), but would be proper under

Sec. 1.53 (in the absence of a reference to Sec. 1.60). The elimination

of Sec. 1.60 will result in a reduction in the Office's burden in

treating and the applicant's burden in correcting these improper

applications under Sec. 1.60, as such applications would generally have

been proper applications if filed under Sec. 1.53 (without a reference

to Sec. 1.60). Section 1.63(d) retains most of the benefits of

Sec. 1.60, but eliminates the filing ``traps'' of Sec. 1.60.

Section 1.62 practice also causes problems concerning its

prohibition against including a new or substitute specification, and

its permitting the filing of a continuation-in-part. To avoid continued

prosecution application practice under Sec. 1.53(d) being confused with

the former file-wrapper-continuation practice under Sec. 1.62, the

Office has deemed it advisable to use a new Sec. 1.53(d) rather than

Sec. 1.62 in regard to continued prosecution application practice.

Comment 33: One comment stated that the Office should anticipate

the filing of applications containing a reference to Sec. 1.60 or

Sec. 1.62 for some period.

Response: That applications containing a reference to Secs. 1.60 or

1.62 will continue to be filed has been anticipated. The treatment of

such applications is discussed infra with respect to the elimination of

Secs. 1.60 and 1.62.

Comment 34: One comment stated that the safeguard in Sec. 1.60

concerning

[[Page 53146]]

the filing of an application lacking all of the pages of specification

or sheets of drawings of the prior application has not been retained in

Sec. 1.53(b). The comment suggested that Sec. 1.53 contain a

presumption that a continuation or divisional be presumed, absent

evidence to the contrary, to be the filing of an application identical

to the prior application.

Response: The Court of Customs and Patent Appeals (CCPA) has held

that a mere reference to another application, patent, or publication is

not an incorporation of anything therein into the application

containing such reference. See In re de Seversky, 474 F.2d 671, 177

USPQ 144 (CCPA 1973); see also Dart Industries v. Banner, 636 F.2d 684,

207 USPQ 273 (CCPA 1980)(related decision). These decisions relied upon

In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967), which considered

the incorporation by reference issue in the context of whether a prior

art patent adequately incorporated by reference a prior application.

The court, in Lund, specifically stated:

There is little in the term ``continuation-in-part'' which would

suggest to the reader of the patent that a disclosure of the nature

of Example 2 is present in the earlier application and should be

considered a part of the patent specification. Thus, we cannot agree

that the subject matter of claim 3 is tacitly ``described'' in the

Margerison patent within the meaning of Sec. 102(e).

Id. at 989, 153 USPQ 631-32 (footnote discussing the definition of

``continuation-in-part'' as set forth in MPEP 201.08 omitted). While

the holdings in Dart Industries, de Seversky and Lund appear to be

based upon the definitions of the various categories of continuing

applications set forth in the MPEP (and thus could be changed by a

revision to the MPEP), the Office is not at this time inclined to

disturb settled law in this area.

Nevertheless, an applicant may incorporate by reference the prior

application by including, in the continuing application-as-filed, a

statement that such specifically enumerated prior application or

applications are ``hereby incorporated herein by reference.'' The

inclusion of this incorporation by reference of the prior

application(s) will permit an applicant to amend the continuing

application to include any subject matter in such prior application(s),

without the need for a petition.

Section 1.54

Section 1.54(b) is amended to add the phrase ``unless the

application is an application filed under Sec. 1.53(d).'' To minimize

application processing delays in applications filed under Sec. 1.53(d),

such applications will not be processed by the Office of Initial Patent

Examination as new applications.

No comments were received regarding the proposed change to

Sec. 1.54.

Section 1.55

Section 1.55(a) is amended to remove the requirement that the

statement be verified in accordance with the change to Secs. 1.4(d)(2)

and 10.18.

No comments were received regarding the proposed change to

Sec. 1.55.

Section 1.59

Section 1.59 is amended: (1) By revising the title to indicate that

expungement of information from an application file would come under

this section; (2) by revising the existing paragraph and designating it

as paragraph (a)(1); and (3) by adding paragraphs (a)(2), (b) and (c).

Section 1.59(a)(1) retains the general prohibition on the return of

information submitted in an application, but no longer limits that

prohibition to an application that has been accorded a filing date

under Sec. 1.53. The portion of the paragraph relating to the Office

furnishing copies of application papers has been shifted to new

paragraph (c). Section 1.59(a)(2) makes explicit that information,

forming part of the original disclosure (i.e., written specification

including the claims, drawings, 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.

Section 1.59(b) provides 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.

Section 1.59(b) covers the current practice set forth in MPEP 724.05

where information is submitted as part of an information disclosure

statement and 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 reply 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

dismissed as premature or 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.

Petitions to expunge were formerly considered under Sec. 1.182,

with the Office of Petitions consulting with the examiner on the

materiality of the information at issue prior to rendering a decision.

A possible result of the amendment to Sec. 1.59 would be to have

petitions under Sec. 1.59 to expunge simply decided by the examiner who

determines the materiality of the information.

Comment 35: One comment suggested that petitions to expunge under

Sec. 1.59 should be decided by Group Directors or officials in the

Office of Petitions, rather than by examiners. The comment argued that

any individual examiner would decide such a petition so rarely that it

would be difficult to produce uniform and consistent decisions.

Response: The preamble has been amended to reflect that a possible

result of the rule change is to have petitions under Sec. 1.59 decided

by the examiners. The heart of most petitions to expunge is a

determination as to whether the material sought to be expunged is

material to examination, a matter that is now referred to examiners

prior to a decision on the petition. Given the major role examiners now

play in expungement matters, it is not clear why examiners would be

rendering inconsistent decisions, particularly as so many other matters

are routinely assigned to examiners including petitions under

Sec. 1.48. Nevertheless, the comment is not germane to Sec. 1.59 as

proposed (or adopted), but concerns the internal Office delegation of

such petitions for consideration. Moreover, a petition to expunge a

part of the original disclosure would have to be filed under Sec. 1.183

and would continue to be decided in the Office of Petitions.

Comment 36: A comment in requesting some examples of things that

may be expunged asked whether a design code listing as an appendix in

an application may be expunged.

Response: The standard set forth in paragraph (b) of Sec. 1.59

permits information other than what is enumerated in paragraph (a) of

the section to be expunged if it is established to the satisfaction of

the Commissioner that the return of the information is appropriate. The

types of information and rationales why the information may be returned

are varied and will be evaluated on a case-by-case basis with the basic

inquiry being whether the information is material to

[[Page 53147]]

examination of the application. However, to the extent that an appendix

to a specification of an application is considered part of the original

disclosure it cannot be expunged from the file under Sec. 1.59(a)(2).

Section 1.59(b) also covers information that was unintentionally

submitted in an application, provided that: (1) The Office can effect

such return prior to the issuance of any patent on the application in

issue; (2) 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;

(3) the information has not otherwise been made public; (4) 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 (5) it is established to the satisfaction of the

Commissioner that the information to be returned is not material

information under Sec. 1.56. A request to return information that has

not been clearly identified as information that may be later subject to

such a 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.

Section 1.59(b) also covers the situation where an unintended

heading has been placed on papers so that they are present in an

incorrect application file. In such a 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 the need of a petition.

Section 1.59(c) 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

Section 1.60 is removed and reserved.

Section 1.60 is now unnecessary due to the amendment to

Sec. 1.63(d) to expressly permit the filing in a continuation or

divisional application using a copy of the oath or declaration filed in

the prior application, and to provide (Sec. 1.63(d)(2)) for the filing

of a continuation or divisional application by all or by fewer than all

the inventors named in a prior application.

See comments relating to Sec. 1.53.

Section 1.62

Section 1.62 is removed and reserved.

Section 1.62 is unnecessary due to the addition of Sec. 1.53(d) to

permit the filing of a continued prosecution application.

It is anticipated that 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. An

application 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(d), and those applications that do not meet the requirements

of Sec. 1.53(d) (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(d). Such an improper application under Sec. 1.53(d) may be

accepted and treated as a proper application under Sec. 1.53(b) by way

of petition under Sec. 1.53(e) (and submission of the $130 fee pursuant

to Sec. 1.17(i)).

A petition under Sec. 1.53(e) to accept and treat an improper

application under Sec. 1.53(d) as a proper application under

Sec. 1.53(b) must include: (1) The $130 petition fee; (2) a true copy

of the complete application designated as the prior application in the

purported Sec. 1.62 application papers; (3) any amendments entered in

the prior application; and (4) any amendments submitted but not entered

in the prior application and directed to be entered in the purported

Sec. 1.62 application papers. In an application purporting to be a

continuation or divisional application under Sec. 1.62, the true copy

of the prior application will constitute the original disclosure of the

application under Sec. 1.53(b), and any amendments entered in the prior

application or not entered in the prior application but directed to be

entered in the purported Sec. 1.62 application papers and submitted

with the Sec. 1.53(e) petition will be entered in the application under

Sec. 1.53(b) and considered by the examiner for new matter under 35

U.S.C. 112, para. 1, and 132. In an application purporting to be a

continuation-in-part application under Sec. 1.62, the true copy of the

prior application, any amendments entered in the prior application or

not entered in the prior application but directed to be entered in the

purported Sec. 1.62 application papers and submitted with the

Sec. 1.53(e) petition, and any preliminary amendment submitted with the

purported Sec. 1.62 application will constitute the original disclosure

of the application under Sec. 1.53(b).

See comments relating to Sec. 1.53.

Section 1.63

Section 1.63(a)(3) is amended to require the post office address to

appear in the oath or declaration and to have the requirement from

Sec. 1.41(a) for the full names of the inventors placed therein.

Comment 37: Two comments raised the issue regarding the continued

requirement that both a post office address and a residence be supplied

and indicated that the residence is not required by statute, the post

office address is sufficient for communication purposes, and that the

burden of submitting both far outweighs the infrequent need to contact

any particular inventor bypassing counsel so that the residence alone

should be sufficient.

Response: Under the proposed comment the applicants would still be

required to submit either the residence or post office address. To

request that they also supply the other or state that both are the same

is not seen to be a significant burden as the information is to be

supplied on the oath or declaration form that they must sign anyway and

spaces can be provided to ensure that the information is supplied.

While neither the residence nor the post office address are statutory

requirements, the Office requires this information for the applicant's

benefit. As more than one person may have the same name, a person's

name is often not sufficient to provide a unique identification of the

inventor. Thus, the Office also requires an inventor's residence (which

is not required to be sufficiently detailed to

[[Page 53148]]

suffice as a post office address) to specifically identify the

person(s) named in the oath or declaration as the inventor(s), which is

a common practice for legal documents. The post office address is also

required in the event that the Office finds it necessary to directly

contact the inventor(s). It is not uncommon for an inventor to revoke a

power of attorney or authorization of agent in a paper providing no

address for future correspondence from the Office. Also, the Office

will need to directly contact the inventor if the Office is notified of

the death of a sole attorney or agent of record (MPEP 406).

Section 1.63(d) is amended to: (1) relocate its current language in

a new Sec. 1.63(e); and (2) provide that a newly executed oath or

declaration is not required under Sec. 1.51(b)(2) and 1.53(f) in a

continuation or divisional application filed by all or by fewer than

all of the inventors named in a prior nonprovisional application

containing an oath or declaration as prescribed by Sec. 1.63, provided

that a copy of the executed oath or declaration filed in the prior

application is submitted for the continuation or divisional application

and the specification and drawings filed in the continuation or

divisional application contain no matter that would have been new

matter in the prior application. The copy of the oath or declaration

must show the signature of the inventor(s) or contain an indication

thereon that the oath or declaration was signed (e.g., the notation ``/

s/'' on the line provided for the signature).

A continuation or divisional application may be filed under 35

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

providing either: (1) A copy of the prior application, including a copy

of the oath or declaration in such prior application, as filed; or (2)

a new specification and drawings and a copy of the oath or declaration

as filed in the prior application so long as no matter is included in

the new specification and drawings that would have been new matter in

the prior application. The specification and drawings of a continuation

or divisional application is not limited to a reproduction or ``true

copy'' of the prior application, but may be revised for clarity or

contextual purposes vis-a-vis the prior application in the manner that

an applicant may file a substitute specification (Sec. 1.125) or amend

the drawings of an application so long as it does not result in the

introduction of new matter. Of course, 35 U.S.C. 115 requires that a

supplemental oath or declaration meeting the requirements of Sec. 1.63

be filed in the continuation or divisional application, if a claim is

allowed in the continuation or divisional application which is drawn to

subject matter originally shown or described in the prior application

but not substantially embraced in the statement of the invention or

claims originally presented in the prior application as filed. See

Sec. 1.67(b).

The patent statute and rules of practice do not require that an

oath or declaration include a 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. 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.

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. 1.63(d). 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 application as a new

non-continuing application. 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 divisional.

To continue the practice in Sec. 1.60(b)(4) of permitting the

filing of a continuation or divisional application by all or by fewer

than all of the inventors named in a prior application without a newly

executed oath or declaration, new Sec. 1.63(d)(2) provides that the

copy of the oath or declaration submitted for a continuation or

divisional application under Sec. 1.63(d) 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 copy of the executed oath or declaration

from the prior application. Accordingly, if a petition under Sec. 1.48

(a) or (c) was granted in the prior application, an oath or declaration

filed in a continuation or divisional application pursuant to

Sec. 1.63(d) should be the oath or declaration also executed by the

added inventor(s). For situations where an inventor or inventors are to

be added in a continuation or divisional application, see

Sec. 1.63(d)(5).

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(b) to sign an amendment in the continuation or divisional

application.

Section 1.63(d)(3) provides for the situation in which the executed

oath or declaration of which a copy is submitted for a continuation or

divisional application was originally filed in a prior application

accorded status under Sec. 1.47. Section 1.63(d)(3)(i) requires a copy

of any decision granting a petition to accord Sec. 1.47 status to such

application, unless each nonsigning inventor(s) or legal representative

(pursuant to Sec. 1.42 or 1.43) has filed an oath or declaration to

join in an application of which the continuation or divisional

application claims a benefit under 35 U.S.C. 120, 121 or 365(c). Where

a nonsigning inventor or legal representative (pursuant to Sec. 1.42 or

1.43) subsequently joins in any application of which the continuation

or divisional application claims a benefit under 35 U.S.C. 120, 121 or

365(c), Sec. 1.63(d)(3)(ii) also requires a copy of any oath or

declaration filed by an inventor or legal representative to

subsequently join in such application.

Section 1.63(d)(4) provides that where the power of attorney (or

authorization of agent) or correspondence address was changed during

the prosecution of the prior application, the change in power of

attorney (or authorization of agent) or correspondence address must be

identified in the continuation or divisional application, or the Office

may not recognize in the continuation or divisional application the

change of power of attorney (or authorization of agent) or

correspondence address during the prosecution of the prior 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,

and Sec. 1.63(d)(5) expressly states 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.

[[Page 53149]]

New Sec. 1.63(e) provides that a newly executed oath or declaration

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

may name all, more, or fewer than all of the inventors named in the

prior application, and includes the language relocated from former

Sec. 1.63(d) concerning an oath or declaration in a continuation-in-

part application.

Comment 38: One comment suggested that the practice of permitting

the use of an executed oath or declaration of a prior application

creates a trap for the unwary in the situation in which an applicant

believes in error that no new matter has been added in the

``continuation'' application and does not file a new declaration.

Response: The situation outlined in the comment is less of a trap

for the unwary than the situation in which an applicant files a

substitute specification and believes in error that no new matter has

been added, in that the error in the ``continuation'' may be corrected

by redesignation of the application as a continuation-in-part and the

filing of a new oath or declaration. Nevertheless, it remains the

applicant's responsibility to review any substitute specification or

new specification submitted for a continuation application to determine

that it contains no new matter. See MPEP 608.01(q). An applicant is

advised to simply file a continuing application with a newly executed

oath or declaration when it is questionable as to whether the

continuing application adds material that would have been new matter if

presented in the prior application.

Comment 39: One comment suggested that the option of submitting ``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 * * * the most immediate prior national

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

365(c)'' was strange at best as the applicant or representative should

have a copy of the oath or declaration that was filed to complete the

prior application or could obtain one from Office records.

Response: The suggestion is adopted. Section 1.63(d) as adopted

provides that: ``[a] newly executed oath or declaration is not required

under Sec. 1.51(b)(2) and Sec. 1.53(f) in a continuation or divisional

application filed by all or by fewer than all of the inventors named in

a prior nonprovisional application containing an oath or declaration as

prescribed by paragraphs (a) through (c) of this section, provided that

a copy of the executed oath or declaration filed in the prior

application is submitted for the continuation or divisional

application.''

Comment 40: One comment questioned whether Sec. 1.53 (or Sec. 1.63)

is consistent with Sec. 1.48 as to whether the oath or declaration

filed in a continuing application adding an inventor must be executed

by all of the inventors, or just the added inventor.

Response: The oath or declaration filed in a continuing application

adding an inventor or a continuation-in-part application must name and

be executed by all of the inventors. Sections 1.48 and 1.63(e) are

consistent in this regard.

Comment 41: One comment questioned whether, in a continuation or

divisional application following a chain of continuation or divisional

applications, the copy of the executed oath or declaration may be a

copy of the oath or declaration filed in the immediate prior

application (which may itself be a copy of an oath or declaration from

a prior application), or must be a direct copy of the originally

executed oath or declaration.

Response: Section 1.63(d) requires a copy of the oath or

declaration from the prior application. In instances in which the oath

or declaration filed in the prior application is itself a copy of an

oath or declaration from a prior application, either a copy of the copy

of the oath or declaration in the prior application or a direct copy of

the original oath or declaration is acceptable, as both are a copy of

the oath or declaration in the prior application. See

Sec. 1.4(d)(1)(ii).

Section 1.67

Section 1.67 paragraph (b) is amended to change ``Sec. 1.53(d)(1)''

to ``Sec. 1.53(f)'' for consistency with Sec. 1.53.

No comments were received regarding Sec. 1.67.

Section 1.69

Section 1.69(b) is amended to remove the requirement that the

translation be verified in accordance with the change to

Secs. 1.4(d)(2) and 10.18. Section 1.69(b) is also amended to clarify

the need for a statement that the translation being offered is an

accurate translation, as in Sec. 1.52 paragraphs (a) and (d).

Two comments were received in regard to Sec. 1.69 that also raised

similar issues in regard to Sec. 1.52, which comments are treated with

Sec. 1.52.

Section 1.78

Section 1.78(a)(1) is amended to remove the references to

Secs. 1.60 and 1.62 in view of the deletion of Secs. 1.60 and 1.62, and

to include a reference to an ``international application entitled to a

filing date in accordance with PCT Article 11 and designating the

United States of America.'' Section 1.78(a)(2) is amended for

consistency with the changes to Sec. 1.53, and to provide that ``[t]he

identification of an application by application number under this

section is the specific reference required by 35 U.S.C. 120 to every

application assigned that application number.''

No comments were received regarding the proposed change to

Sec. 1.78.

Section 1.84

Section 1.84(b) is 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 1.84

paragraphs (c) and (g) are amended for consistency in regard to the

English equivalents (5/8 inch.) for 1.5 cm.

No adverse comments were received regarding the proposed change to

Sec. 1.84.

Section 1.91

The title of Sec. 1.91 is amended to clarify that a certain type of

material is not generally admitted in the file record by substitution

of ``admitted'' for ``required.''

Section 1.91 is also amended to clarify the type of material that

is not generally admitted into the file record of an application.

Section 1.91(a) specifically requires a petition (with the fee set

forth in Sec. 1.17(i)) including an appropriate showing why entry of

the model or exhibit into the file record is necessary to demonstrate

patentability, unless the model or exhibit: (1) substantially conforms

with Sec. 1.52 or Sec. 1.84; or (2) was required by the Office.

Section 1.91 is also amended to state that a model, working model

or other physical exhibit, whose submission by applicants is generally

not permitted, may be required by the Office if deemed necessary for

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

moved from Sec. 1.92.

Comment 42: Several adverse comments were received expressing

concern that the addition of the term ``exhibits'' to the bar against

admission of models, unless specifically required by the Office, would

prevent applicants from making their best possible case for

patentability, and that exhibits would be interpreted by the Office as

barring two-dimensional as well as three-dimensional exhibits.

Response: The preamble of the proposed rule indicated that the

change to the rule is in the nature of a clarification and not a change

in practice. Further clarification has been added to the rule by

reference to Sec. 1.52

[[Page 53150]]

or Sec. 1.84 and to the instant discussion of the rule to indicate that

the use of the term ``exhibits'' is in the nature of other three-

dimensional models, such as videos, and will not bar two-dimensional

exhibits currently being accepted. Additionally, a petition route has

been added to the rule that would permit entry of three-dimensional

models or exhibits where they are necessary to establish patentability.

Section 1.91 is also amended to expressly provide for the filing of a

petition thereunder (rather than to require the filing of a petition

under Sec. 1.183) such that an applicant may gain entry of a model or

exhibit, without a showing of an extraordinary situation where justice

requires grant of the relief sought.

The fact that a three-dimensional model or exhibit will not

generally be entered in the record absent an appropriate showing does

not prevent an applicant from showing the exhibit to the examiner for

purposes of clarifying the examiner's understanding of the invention

and reducing the model or exhibit to two-dimensional conformance with

Sec. 1.52 or Sec. 1.84 for entry of that reduction to the record (which

issues are separate and distinct from the questions as to whether the

later presented material was originally required for an understanding

of the invention and its subsequent addition being subject to a new

matter objection under 35 U.S.C. 132).

Due to the unusual difficulties of storage for three-dimensional

materials and little demonstrated need for their presence in the file

record over what would be provided for via petition under Sec. 1.91, it

is not seen to be appropriate to permit unrestricted entry of three-

dimensional exhibits in the file record.

Section 1.92

Section 1.92 is removed and reserved and the language transferred

to Sec. 1.91(b) for improved contextual purposes.

No comments were received regarding the proposed change to

Sec. 1.92.

Section 1.97

Sections 1.97 (c) through (e) are 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, to the knowledge of

the person signing the statement, after making reasonable inquiry, no

item of information contained in the information disclosure 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(B)(2)(ii), 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.

No comments were received regarding the proposed change to

Sec. 1.97.

Section 1.101

Section 1.101 is removed and reserved as relating to internal

Office instructions.

Comment 43: A number of comments opposed the deletion of the rules

that solely govern Office procedure. The reasons given for this

opposition are: (1) The Office should subject its procedures to the

notice and comment provisions of the Administrative Procedure Act

(APA); (2) the inclusion of such procedures in the rules of practice

imparts the force and effect of law to such procedures; (3) the greater

deference given to procedures set forth in the rules of practice,

rather than the MPEP, during court action.

Response: The CCPA has held that applicants before the Office are

entitled to rely not only on the patent statute and rules of practice,

but on the provisions of the MPEP, during the prosecution of an

application for patent. See In re Kaghan, 387 F.2d 398, 401, 156 USPQ

130, 132 (CCPA 1967). Thus, there is in practice little, if any,

benefit to applicants before the Office in having the Office procedure

set forth in the rules of practice, rather than the MPEP. In any event,

no comment pointed to any specific decision, and the Office is not

aware of any decision, in which the result turned on the inclusion of

Office procedure in the rules of practice (rather than simply in the

MPEP).

Nevertheless, in view of the concern expressed in the comments as

to the rules of practice setting forth the fundamentals of the

examination of an application, the Office will retain the substance of

Secs. 1.104 and 1.105 in the rules of practice. See In re Phillips, 608

F.2d 879, 883 n.6, 203 USPQ 971, 974 n.6 (CCPA 1979) (although

irrelevant to the result, the Office was criticized for piecemeal

examination contrary to Secs. 1.104 and 1.105). The substance of

Secs. 1.104, 1.105, 1.106, 1.107, and 1.109, however, will be combined

into Sec. 1.104 paragraphs (a)-(e).

The Office will also retain Sec. 1.351 in the rules of practice, as

it has been relied upon as the notice that the Office will provide

concerning changes to the rules of practice in 37 CFR Part 1. See In re

Nielson, 816 F.2d 1567, 1571, 2 USPQ2d 1525, 1527 (Fed. Cir. 1987).

Finally, the Office will retain Sec. 1.181 paragraphs (d), (e), and (g)

to avoid confusing petition practice, and Sec. 1.325 to avoid confusion

as to the requirements for correction of a patent.

The Office, however, will delete Secs. 1.101, 1.108, 1.122, 1.184,

1.318, and 1.352 from 37 CFR Part 1. The procedures set forth in

Secs. 1.101, 1.122, 1.184, and 1.318 do not provide meaningful

safeguards to applicants (e.g., Sec. 1.101 does not ensure or give an

applicant the right to examination of an application within any

reasonably specific time frame). The proscription in Sec. 1.108 is

simply an administrative instruction based upon the fact that, unless

otherwise publicly available, abandoned applications do not constitute

prior art under 35 U.S.C. 102 (and thus 103). Finally, as former

Sec. 1.352 included a ``whenever required by law'' prerequisite, it

provided no independent requirement that the Office publish proposed

rule changes for comment.

Section 1.102

Section 1.102(a) is amended to remove the requirement that the

showing be verified in accordance with the change to Secs. 1.4(d)(2)

and 10.18.

No comments were received regarding the proposed change to

Sec. 1.102.

Section 1.103

Section 1.103(a) is amended by replacement of ``response'' with

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

No comments were received regarding the proposed change to

Sec. 1.103.

Section 1.104

Section 1.104 is amended to include paragraphs (a) through (e)

including the substance of former Secs. 1.104, 1.105, 1.106, 1.107, and

1.109. The re-writing of Secs. 1.104, 1.105, 1.106, 1.107, and 1.109 as

Sec. 1.104 (a) through (e) involves no change in substance.

See comment relating to Sec. 1.101.

[[Page 53151]]

Section 1.105

Section 1.105 is removed and reserved as the subject matter was

transferred to Sec. 1.104(b).

See comment relating to Sec. 1.101.

Section 1.106

Section 1.106 is removed and reserved as the subject matter was

transferred to Sec. 1.104(c).

See comment relating to Sec. 1.101.

Section 1.107

Section 1.107 is removed and reserved as the subject matter was

transferred to Sec. 1.104(d).

See comment relating to Sec. 1.101.

Section 1.108

Section 1.108 is removed and reserved as relating to internal

Office instructions.

See comment relating to Sec. 1.101.

Section 1.109

Section 1.109 is removed and reserved as the subject matter was

transferred to Sec. 1.104(e).

See comment relating to Sec. 1.101.

Section 1.111

Section 1.111 is amended to consistently refer to a ``reply'' to an

Office action. The prior section used the term ``response'' and

``reply'' in an inconsistent manner and created some confusion.

Paragraph (b) of Sec. 1.111 is also 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.

Comment 44: One comment asked whether pointing out one distinction

is sufficient or must applicant provide an exhaustive list of all

distinctions. Additionally, inquiry is made as to whether it is

sufficient to point out the impropriety of a rejection under 35 U.S.C.

102 that should have been a rejection under 35 U.S.C. 103, or must a

rejection under 35 U.S.C. 103 be anticipated and answered.

Response: A distinction should be kept in mind between what is

necessary for a reply to be considered sufficient to continue

prosecution of the application and what will advance the application to

issuance in the most efficient manner. While pointing out only one

distinction, such as why a rejection under 35 U.S.C. 102 is

inappropriate, would comply with the requirements of Sec. 1.111,

advancement of the prosecution of the application would best be served

by pointing out all possible distinctions, so that if the argument for

one distinction is not persuasive, another may be. Similarly,

anticipation of and argument against a rejection under 35 U.S.C. 103

where a rejection under 35 U.S.C. 102 should have been made under 35

U.S.C. 103 could possibly prevent making of the rejection under 35

U.S.C. 103 by the examiner and an earlier issuance of the application

thereby preserving patent term under 35 U.S.C. 154 as amended by Pub.

L. 103-465.

Comment 45: Three comments pointed to instances where a reply would

not necessarily require that distinctions be pointed out, such as: (1)

where context and arguments presented make the distinctions clear

beyond doubt; (2) where a prima facie case has not been established or

motivation for modification of a reference is lacking; (3) a secondary

reference is from a nonanalogous art improperly combined; or (4) no

reference has been applied.

Response: The comment has been adopted to the extent that the

paragraph (b) of the rule has been amended to refer to ``any'' rather

than ``the'' applied references. Any argument that would make the

distinctions clear beyond doubt would seem to require identification of

the distinctions therein. Where a reply contains an argument that

motivation for a modification of a reference made by an examiner does

not exist, or that a nonanalogous secondary reference has been

improperly combined, the identification of the claim element involved

and the particular factual basis that makes the modification or

combination relating to that claim element inappropriate are necessary

elements of a reply. That an applicant considers a rejection,

objection, or other requirement in an Office action to be inappropriate

does not relieve the applicant of the burden under 35 U.S.C. 133 of

prosecuting the application to avoid abandonment.

Comment 46: A comment suggested that the requirement for supplying

claim distinctions for a newly presented claim is at odds with the

Office's burden in the first instance of explaining any objection or

rejection of an applicant's claim, and that the existing requirement

that an applicant distinctly and specifically point out the errors in

the examiner's action and reply to every ground of objection and

rejection are sufficient without the added language. Another comment

noted that it is believed that the rule already requires that specific

distinctions be supplied and questions what new requirements are being

added by that additional language.

Response: To the extent that the already existing language would

require that claim distinctions be presented, the added language is

seen to clarify what is required of an applicant in replying to an

Office action and is not seen to be at odds with the Office's burden in

first going forward with a rejection of the claims. Once a claim is

rejected, there is a duty on applicants under Sec. 1.111 to provide an

appropriate reply as defined therein for applicant to be entitled to

reconsideration or further examination.

Section 1.112

Section 1.112 is amended to remove as 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, in which amendments after

the second action need not be restricted to the rejection or the

objections or requirements set forth in an Office action. The heading

of Sec. 1.112 is also amended to add ``before final action'' to clarify

that such reconsideration does not apply after a final Office action.

No comments were received regarding the proposed change to

Sec. 1.112.

Section 1.113

Section 1.113(a) is amended to add ``by the examiner'' after

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

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

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

Section 1.113(b) is amended to change ``clearly stating the reasons

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

clarity.

Comment 47: A number of comments argued that first action final

practice should be eliminated without regard to an amendment to

Sec. 1.116 as: (1) 35 U.S.C. 132 does not authorize first action final

practice; and (2) the filing fee paid in a continuing application

should entitle an applicant to an examination and reexamination in the

continuing application.

Response: The argument that 35 U.S.C. 132 does not authorize first

action final practice has been considered by the Office and rejected in

In re Bogese, 22 USPQ2d 1821 (Comm'r Pat. 1992). Specifically,

continuing applications have historically been considered part of a

continuous proceeding in regard to the prior application. Id. at 1827.

First action final practice denies an applicant the delay inherent in

an additional Office action in a continuation application, thus

compelling the applicant to draft

[[Page 53152]]

claims in a continuation application in view of the prosecution history

of the parent application (i.e., the rejections and prior art of record

in the parent application), and thus make a bona fide effort to define

the issues for appeal or allowance. Id. at 1824-25.

In addition, under the current patent fee structure, a significant

portion of the Office's costs of examining patent applications is

recovered through issue and maintenance fees. That is, the filing fees

required by 35 U.S.C. 41(a) (1)-(4) and Sec. 1.16 for an application do

not cover the Office's full costs of examining that application

pursuant to 35 U.S.C. 131 and 132. Therefore, the argument that first

action final practice is inherently unfair in view of the filing fees

paid by the applicant fails to appreciate the current patent fee

structure.

Due to the overwhelming opposition to the proposed changes to

Sec. 1.116 to simplify after final practice, the proposed change to

Sec. 1.113 to eliminate first action final practice and the proposed

changes to Sec. 1.116 to simplify after final practice are not adopted

in this Final Rule. The Office will give further consideration to the

elimination of first action final practice.

Comment 48: One comment suggested that Sec. 1.113 should be

clarified to reflect the intent of the rule change that a first action

final rejection not issue in a continuation application.

Response: The proposed change to Sec. 1.113 to prohibit a first

action final rejection is not being adopted.

Section 1.115

Section 1.115 has been removed and reserved, rather than amended to

contain the material of former Secs. 1.117 through 1.118, 1.123 and

1.124. The subject matter proposed to be included in Sec. 1.115 has

been transferred to Sec. 1.121. The change does not constitute a change

in substance; the material of the deleted sections has simply been

rearranged and edited for clarity and contextual purposes in

Sec. 1.121. The reference in Sec. 1.115(b)(2) relating to the rejection

of claims containing new matter has not been retained in Sec. 1.121 as

unnecessary.

Comment 49: One comment recognizing that the subject matter of

Sec. 1.118 is transferred to Sec. 1.115 (now Sec. 1.121) noted that the

particular material of the second and third sentences of paragraph (a)

of Sec. 1.118(a) was not so transferred and should be.

Response: While the exact language of the second and third

sentences of paragraph (a) of Sec. 1.118 was not transferred to 1.121

(Sec. 1.115 as originally proposed), the concept is retained in

Sec. 1.121, paragraphs (a)(6), (b)(5), and (c)(1), in condensed form.

Comment 50: One comment objected to the requirement of paragraph

(d) of Sec. 1.115 (now Sec. 1.121) where a disclosure must be amended

to secure correspondence between the claims, the specification and the

drawings. Forcing the specification to parrot the language of new

claims, where only new claims originally use a term not found in the

original disclosure and in the original claims, is said to impose an

undue burden on applicant and jeopardize the validity of all the claims

if the new term is found to be new matter.

Response: The comment does not explain why a specification

containing a later added expression subsequently found to contain new

matter will adversely affect claims that do not contain that

expression, particularly if a portion of the specification is retained

that provides support for claims not containing that expression.

Additionally, the requirement being criticized is not a new requirement

but was material transferred from Sec. 1.117. However, the comment was

adopted in-part in that Sec. 1.121, paragraphs (a)(5) and (b)(4),

require only ``substantial correspondence'' between the claims, the

remainder of the specification, and the drawings.

Comment 51: One comment suggested that the term ``sketch'' in

paragraph (e) of Sec. 1.115 (now Sec. 1.121) be broadened to

``drawing.''

Response: Sections 1.121(a)(3)(ii) and 1.121(b)(3)(ii) recite

sketch, which has been interpreted by the Office to include a copy. The

use of sketch is seen to be the broader term in allowing a handwritten

alteration of a copy of the previously submitted drawing to be done

without the need for a color copy being obtained.

Comment 52: One comment suggested that paragraph (f) of Sec. 1.115

(now Sec. 1.121), requiring no interlineations to appear in a clause as

finally presented, is inconsistent with the requirements of Sec. 1.121

requiring brackets and underlining of the subject matter deleted and

added.

Response: The comment was adopted by clarifying Sec. 1.121(a)(iii)

as adopted by reciting that the interlineation prohibition relates to

previous amendments being depicted in a subsequent amendment, and to

limit its applicability to applications other than reissue applications

(thereby also excluding reexamination proceedings) in that all changes

from the patent are required to be shown in reissue applications and

reexamination proceedings.

Section 1.116

Section 1.116 is amended by adding the phrase ``or appeal'' to its

heading. This change clarifies the current practice that paragraphs (b)

and (c) apply to amendments filed after an appeal, regardless of

whether the application was subject to a final rejection prior to the

appeal.

Section 1.116(a) is also amended for clarity to 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 replaces the phrase ``any

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

clarity. The amendment does not represent a change in practice under

Sec. 1.116(a) as was originally proposed, but merely a clarification of

when an applicant is entitled to entry of an amendment under

Sec. 1.116(a).

Comment 53: Almost every comment relating to the proposed change to

Sec. 1.116 to limit entry of amendments after a final Office action

based on simplification of issues for appeal opposed the change. The

various rationales included: (1) A liberal practice by examiners in

entering amendments after final rejection based on a willingness to

engage in significant negotiations after final rejection; (2) an

increased burden on the Board of Patent Appeals and Interferences

(Board); (3) a loss of potential patent term under 35 U.S.C. 154 if

refiling an application was routinely required; (4) a loss of clarity

by applicant and the examiner of the issues involved, in that it is

frequently only after the second action that the issues become

clarified, particularly as counsel are not aware of the art that may

actually be applied against the claims and therefore do not submit

claims that can read over such art; (5) to the extent the need to enter

amendments causes refiling of an application, greater resources from

the Office are required as opposed to simply entering the amendment in

the prior application; (6) there will be an increase in the requests

for interviews after first action; (7) the change represents

encouragement for examiners to cut down on papers entered particularly

in view of the crediting system; and (8) the proposal is not helpful to

applicant and is only a revenue generator.

Several alternative suggestions were made including: (1) A fee to

have amendments after final entered as a matter of right; (2)

discretion for examiners to enter any amendment should be explicitly

stated in the rule; (3) consider substantive amendments if

[[Page 53153]]

submitted at least one month in advance of the end of the reply period;

(4) eliminate applicant's concern for expedited handling of Sec. 1.116

amendments by having a new period for appealing or refiling; (5) entry

of amendment to solely correct rejections under 35 U.S.C. 112, para. 2,

should be permitted; (6) first after final submission permitted entry

under simplification of issues standard and any subsequent submission

would only be permitted under standard as proposed without

simplification of issues available; (7) merging of a dependent claim

into an independent claim ought to be explicitly permitted as a matter

of right; (8) provide a standard of entry dependent upon good and

sufficient reason

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