# Changes to Patent Practice and Procedure

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URL: https://www.frixlaw.com/law-library/documents/fr%3A97-26339

## Record

- **Collection:** Federal Register
- **Document type:** Rule
- **Published:** October 10, 1997
- **Citation:** 62 FR 53132

## Text

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 i

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A97-26339. Public record. Not legal advice.