Changes To Implement the Patent Business Goals

SUMMARY: The Patent and Trademark Office (PTO) has established business

goals for the organizations reporting to the Assistant Commissioner for

Patents (Patent Business Goals). The Patent Business Goals have been

established in response to the Vice-President's designation of the PTO

as an agency that has a high impact on the public, and they are

designed to make the PTO a more business-like agency. The focus of the

Patent Business Goals is to increase the level of service to the public

by raising the efficiency and effectiveness of the PTO's business

processes.

The PTO is considering a number of changes to the rules of practice

and procedure to support the Patent Business Goals. The PTO is

publishing this Advance Notice of Proposed Rulemaking to allow for

public input at an early stage in the rule making process. The PTO is

soliciting comments on these specific changes to the rules of practice

or procedures.

DATES: Comment Deadline Date: To be ensured of consideration, written

comments must be received on or before December 4, 1998. While comments

may be submitted after this date, the PTO cannot ensure that

consideration will be given to such comments. No public hearing will be

held.

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

addressed to [email protected]. Comments may also be submitted by

mail addressed to: Box Comments--Patents, Assistant Commissioner for

Patents, Washington, D.C. 20231, or by facsimile to (703) 308-6916,

marked to the attention of Hiram H. Bernstein. Although comments may be

submitted by mail or facsimile, the Office prefers to receive comments

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

would prefer that the comments be submitted on a DOS formatted 3\1/4\

inch disk accompanied by a paper copy.

The comments will be available for public inspection at the Special

Program Law Office, Office of the Deputy Assistant Commissioner for

Patent Policy and Projects, located at Suite 520, of One Crystal Park,

2011 Crystal Drive, Arlington, Virginia, and will be available through

anonymous file transfer protocol (ftp) via the Internet (address:

ftp.uspto.gov). Since comments will be made available for public

inspection, information that is not desired to be made public, such as

an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: With regard to this Advance Notice of

Proposed Rulemaking in General: Hiram H. Bernstein or Robert W. Bahr,

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

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

by facsimile to (703) 308-6916, marked to the attention of Mr.

Bernstein.

With regard to simplifying request for small entity status (Topic

1): James E. Bryant, III, at the above telephone number.

With regard to requiring separate surcharges and supplying filing

receipts (Topic 2), and permitting delayed submission of an oath or

declaration, and changing time period for submission of the basic

filing fee and English translation (Topic 3), and creating a PTO review

service for applicant-created forms (Topic 21): Fred A. Silverberg, at

the above telephone number.

With regard to limiting the number of claims in an application

(Topic 4), providing for presumptive elections (Topic 14), and creating

alternative review procedures for applications under appeal (Topic 18):

Robert W. Bahr, at the above telephone number.

With regard to harmonizing standards for patent drawings (Topic 5),

printing patents in color (Topic 6), and reducing time for filing

corrected or formal drawings (Topic 7): Karin L. Tyson, at the above

telephone number.

With regard to permitting electronic submission of voluminous

material (Topic 8): Jay Lucas, at the above telephone number.

With regard to imposing limits/requirements on information

disclosure statement submissions (Topic 9), and refusing information

disclosure statement consideration under certain circumstances (Topic

10): Kenneth M. Schor, at the above telephone number.

With regard to providing no cause suspension of action (Topic 11):

Gerald A. Dost, at the above telephone number.

With regard to requiring a handling fee for preliminary amendments

and supplemental replies (Topic 12): Randall L. Green, at the above

telephone number.

With regard to changing amendment practice to replacement by

paragraphs/claims (Topic 13), requiring identification of broadening in

a reissue application (Topic 16), and changing multiple reissue

application treatment (Topic 17): Joseph A. Narcavage, at the above

telephone number.

With regard to creating a rocket docket for design applications

(Topic 15): Lawrence E. Anderson, at the above telephone number.

With regard to eliminating preauthorization of payment of the issue

fee (Topic 19), and reevaluating the Disclosure Document Program (Topic

20): John F. Gonzales, at the above telephone number.

SUPPLEMENTARY INFORMATION:

I. Background

For Fiscal Year 1999, the PTO is emphasizing its core business: (1)

the granting of patents; (2) the registering of trademarks; and (3) the

dissemination of the information contained in those documents. The

Presidential themes of encouraging innovation and investment, enhancing

our customers' satisfaction and seeking efficiencies through

international cooperation are embodied in the business goals of the

organizations reporting to the Assistant Commissioner for Patents

(Patent Business Goals).

President Clinton's Framework for Global Electronic Commerce

demands that the United States make its system for protecting

patentable innovations more efficient to meet the needs of the fast-

moving electronic age. The PTO was selected by Vice President Gore as

one of a small group of Federal agencies, known as High Impact

Agencies, that has a direct impact on the public. The products and

services that the PTO provides to its customers must enable them to get

their new inventions and new ideas into the American and global

marketplace.

The PTO's participation as a High Impact Agency is expressed in its

Year 2000 Commitments, part of the Fiscal Year 1999 Annual Performance

Plan. Some key objectives of that plan include:

1. The PTO will reduce its processing or cycle time (i.e., the

actual time spent by the PTO in processing an application, which does

not include the time when the PTO is awaiting a reply or other action

by the applicant) for inventions to twelve months by the year 2003.

2. The PTO will test reengineered processes and automated systems,

and

[[Page 53499]]

be ready to deploy electronic processing of patent applications by the

year 2003.

3. The PTO will work with the World Intellectual Property

Organization (WIPO) to achieve electronic filing of Patent Cooperation

Treaty applications, and by the year 2000, electronically receive and

process Patent Cooperation Treaty (PCT) applications at the PTO.

The activities in this plan call for changes in the very nature of

the patent prosecution activity as it currently exists. Such activities

are reflected in the regulations of the PTO, Title 37 of the Code of

Federal Regulations. This rulemaking is designed to be the vehicle of

the changes to these regulations, to embody the spirit and substance of

the PTO's activities for self-improvement.

II. Specific Patent Business Goals

The PTO has established five specific Patent Business Goals, which

have been adopted as part of the Fiscal Year 1999 Corporate Plan

Submission of the President. The five Patent Business Goals are:

Goal 1: Reduce PTO processing time (cycle time) to twelve months or

less for all inventions.

Goal 2: Establish fully-supported and integrated Industry Sectors.

Goal 3: Receive applications and publish patents electronically.

Goal 4: Exceed our customers' quality expectations, through the

competencies and empowerment of our employees.

Goal 5: Align fees commensurate with resource utilization and

customer efficiency.

The organizations reporting to the Assistant Commissioner for

Patents have developed a business plan (Patent Business Plan) to

achieve the Patents Business Goals. The rule and procedure changes

currently under consideration by the PTO, and to which this Advance

Notice of Proposed Rulemaking (Advance Notice) pertains, are in support

of the Patent Business Plan.

An example of how the PTO is considering changes to the rules of

practice and procedure to meet the varied demands of its customers is

shown by the consideration of both an expedited examination procedure

for design applications as well as an expanded suspension of action (or

deferred examination) procedure. Currently, all applications are, with

limited exceptions, scheduled for examination based upon their filing

date. See section 708.02 of the Manual of Patent Examining Procedure

(6th ed., rev. 3, July 1997) (MPEP). While the rules of practice do

provide for the advancement of applications for examination (37 CFR

1.102) and suspension of action in an application (37 CFR 1.103), the

current procedures are not sufficiently tailored to the varied needs of

the PTO's customers.

The PTO is considering providing a procedure under which those

design applicants who need rapid examination due to rapid style changes

will be able to request expedited examination of their applications.

The PTO is also considering providing a procedure under which those

applicants who do not need or desire examination (e.g., the cost of

prosecution is a burden and the invention is not yet commercially

viable) will be able to request a prolonged suspension of action.

Obviously, applicants may be required to pay additional fees (e.g., to

recover the PTO's costs of exception processing for an expedited

application) or waive certain rights (e.g., agree to publication of the

application as a condition of a prolonged suspension of action) to

avail themselves of the benefits of these procedures.

Finally, the changes under consideration are intended to improve

the PTO's business processes in the context of the current legal and

technological environment. Should these environments change (e.g., by

adoption of an international Patent Law Treaty, enactment of H.R. 400

or S. 507, 105th Cong., 1st Sess. (1997), or implementation of new

automation capabilities), the PTO would have to reconsider its business

processes and make such further changes to the rules of practice as are

necessary.

III. Topics for Public Comment

A. Introduction

The topics on which the PTO particularly desires public input at

this rulemaking stage are:

(1) Simplifying requests for small entity status (37 CFR 1.27);

(2) Requiring separate surcharges and supplying filing receipts (37

CFR 1.53);

(3) Permitting delayed submission of an oath or declaration, and

changing time period for submission of the basic filing fee and English

translation (37 CFR 1.52, 1.53);

(4) Limiting the number of claims in an application (37 CFR 1.75);

(5) Harmonizing standards for patent drawings (37 CFR 1.84);

(6) Printing patents in color (37 CFR 1.84);

(7) Reducing time for filing corrected or formal drawings (37 CFR

1.85);

(8) Permitting electronic submission of voluminous material (37 CFR

1.96, 1.821);

(9) Imposing limits/requirements on information disclosure

statement submissions (37 CFR 1.98);

(10) Refusing information disclosure statement consideration under

certain circumstances (37 CFR 1.98);

(11) Providing no cause suspension of action (37 CFR 1.103);

(12) Requiring a handling fee for preliminary amendments and

supplemental replies (37 CFR 1.111);

(13) Changing amendment practice to replacement by paragraphs/

claims (37 CFR 1.121);

(14) Providing for presumptive elections (37 CFR 1.141);

(15) Creating a rocket docket for design applications (37 CFR

1.155);

(16) Requiring identification of broadening in a reissue

application (37 CFR 1.173);

(17) Changing multiple reissue application treatment (37 CFR

1.177);

(18) Creating alternative review procedures for applications under

appeal (37 CFR 1.192);

(19) Eliminating preauthorization of payment of the issue fee (37

CFR 1.311);

(20) Reevaluating the Disclosure Document Program; and

(21) Creating a PTO review service for applicant-created forms.

A discussion of each of these topics is set forth below.

The topics discussed in this Advance Notice are those for which the

PTO is considering the greatest change from current practice. For this

reason, the PTO is publishing this Advance Notice (rather than a Notice

of Proposed Rulemaking) to obtain public input on these topics at the

inception of the rulemaking process. The public is invited to submit

written comments on any of the topics, including issues related to

changes in practice as well as the implementation of any such change in

practice. Certain topics do not conclude with questions; however, the

PTO desires comments on such topics in general.

Other Considerations

This Advance Notice is in conformity with the requirements of the

Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order

12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44

U.S.C. 3501 et seq.). It has been determined that this rulemaking is

significant for the purposes of Executive Order 12866 (September 30,

1993).

This Advance Notice involves information collection requirements

which are subject to review by the Office of Management and Budget

(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et

seq.). The collections of information involved in this Advance Notice

have been reviewed and previously approved by OMB under the following

control

[[Page 53500]]

numbers: 0651-0021, 0651-0030, 0651-0031, 0651-0032, 0651-0033, 0651-

0035, and 0651-0037. Any collections of information whose requirements

will be revised as a result of the proposed rule changes discussed in

this Advance Notice will be submitted to OMB for approval. The

principal impact of the changes under consideration in this Advance

Rule is to raise the efficiency and effectiveness of the PTO's business

processes to make the PTO a more business-like agency and increase the

level of the PTO's service to the public.

Notwithstanding any other provision of law, no person is required

to respond to nor shall a person be subject to a penalty for failure to

comply with a collection of information subject to the requirements of

the Paperwork Reduction Act unless that collection of information

displays a currently valid OMB control number.

As required by the Paperwork Reduction Act of 1995 (44 U.S.C.

3507(d)), the PTO has submitted a copy of this Advance Notice to OMB

for its review of these information collections. Interested persons are

requested to send comments regarding these information collections,

including suggestions for reducing this burden, to Robert J. Spar,

Director, Special Program Law Office, Patent and Trademark Office,

Washington, D.C. 20231, or to the Office of Information and Regulatory

Affairs of OMB, New Executive Office Bldg., 725 17th St. NW, rm. 10235,

Washington, DC 20503, Attn: Desk Officer for the Patent and Trademark

Office.

The PTO has determined that this Advance Notice has no Federalism

implications affecting the relationship between the National Government

and the States as outlined in Executive Order 12612.

B. Discussion of Specific Topics

1. Simplifying request for small entity status (37 CFR 1.27)

Summary: The PTO is considering simplifying applicant's request for

small entity status. The currently used small entity statement forms

would be eliminated as they would no longer be needed.

Specifics of Change being Considered: Small entity status would be

established at any time by a simple assertion of entitlement to small

entity status without the currently required formalistic reference to

37 CFR 1.9. Payment of the (exact) small entity basic filing fee would

be considered an assertion of small entity status. To establish small

entity status after payment of the basic filing fee, a written

assertion of small entity status would be required to be submitted with

or prior to a fee payment. There would be no change in the current

requirement to make an investigation in order to determine entitlement

to small entity status; the PTO would only be changing the ease with

which small entity status can be claimed once it has been determined

that a claim to such status is appropriate.

Problem and Background: 37 CFR 1.27 currently requires that a

request for small entity status be accompanied by submission of an

appropriate statement that the party seeking small entity status

qualifies in accordance with 37 CFR 1.9. Either a reference to 37 CFR

1.9 or a specific statement relating to the provisions of 37 CFR 1.9 is

mandatory. For a small business, the small business must either state

that exclusive rights remain with the small business, or if not,

identify the party to which some rights have been transferred so that

the party to which rights have been transferred can submit its own

small entity statement (37 CFR 1.27(c)(1)(iii)). This can lead to the

submission of multiple small entity statements for each request for

small entity status where rights in the invention are split. The

request for small entity status and reference/statement may be

submitted prior to paying, or at the time of paying, any small entity

fee. In part, to ensure that at least the reference to 37 CFR 1.9 is

complied with, the PTO has produced four types of small entity

statement forms (including ones for the inventors, small businesses and

non-profit organizations) that include the required reference to 37 CFR

1.9 and specific statements as to exclusive rights in the invention.

Additionally, the statement forms relating to small businesses and non-

profit organizations need to be signed by an appropriate official

empowered to act on behalf of the small business or non-profit

organization. Refunds of non-small entity fees can only be obtained if

a refund is specifically requested within two months of the payment of

the full (non-small entity) fee and is supported by the required small

entity statement. See 37 CFR 1.28(a)(1). The two-month refund window is

not extendable.

The rigid requirements of 37 CFR 1.27 and 1.28 have led to a

substantial number of problems. Applicants, particularly pro se

applicants, do not always recognize that a particular reference to 37

CFR 1.9 is required in their request to establish small entity status.

They believe that all they have to do is pay the small entity fee and

state that they are a small entity. Further, the time required to

ascertain who are the appropriate officials to sign the statement and

to have the statements (referring to 37 CFR 1.9) signed and collected

(where more than one is necessary), results, in many instances, in

having to pay the higher non-small entity fees and then seek a refund.

These situations result in: (1) small entity applicants also having to

pay additional fees (e.g., surcharges and extension(s) of time fees for

the delayed submission of the small entity statement form); (2)

additional correspondence with the PTO to perfect a claim for small

entity status; and (3) the filing of petitions with petition fees to

revive abandoned applications. This increases the pendency of the

prosecution of the application in the PTO and, in some cases, results

in loss of patent term. For example, under current procedures, if a pro

se applicant files a new application with small entity fees but without

a small entity statement, the PTO mails a notice to the pro se

applicant requiring the full basic filing fee of a non-small entity.

Even if the applicant timely files a small entity statement, the

applicant must still timely pay the small entity surcharge for the

delayed submission of the small entity statement to avoid abandonment

of the application. A second example is a non-profit organization

paying the basic filing fee as a non-small entity because of difficulty

in obtaining the non-profit small entity statement form signed by an

appropriate official. In this situation, a refund pursuant to 37 CFR

1.26, based on establishing status as a small entity, may only be

obtained if a statement under 37 CFR 1.27 and the request for the

excess amount are filed within the non-extendable two-month period from

the date of the timely payment of the full fee. A third example is an

application filed without the basic filing fee on behalf of a small

business by a practitioner who includes the standard authorization to

pay additional fees. The PTO will immediately charge the non-small

entity basic filing fee without specific notification thereof at the

time of the charge. By the time the deposit account statement is

received and reviewed, the two-month period for refund may have

expired.

Accordingly, a simpler procedure to establish small entity status

would reduce processing time within the PTO (Patent Business Goal 1)

and would be a tremendous benefit to small entity applicants as it

would eliminate the time-consuming and aggravating processing

requirements that are mandated by the current rules. Thus, the proposed

simplification would help small entity applicants to receive patents

sooner with fewer expenditures

[[Page 53501]]

in fees and resources and the PTO could issue the patent with fewer

resources (Patent Business Goals 4 and 5).

Simplified Request for Small Entity Status: The PTO is considering

allowing small entity status to be established by the submission of an

assertion of entitlement to small entity status. The current formal

requirements of 37 CFR 1.27, which include a reference to either 37 CFR

1.9, or to the exclusive rights in the invention, would be eliminated.

If small entity status is to be requested at the time of payment of the

basic filing fee, the payment of the (exact) small entity basic filing

fee will be considered to be a sufficient assertion. If small entity

status was not established when the basic filing fee was paid, a later

claim to small entity status would be by way of a written assertion.

Payment of a small entity fee (e.g., extension of time, or issue fee)

without inclusion of a written assertion would not be sufficient.

The written assertion will not be required to be presented in any

particular form. Written assertions of small entity status or

references to small entity fees will be liberally interpreted to

represent the required assertion. The written assertion could be made

in any paper filed in or with the application and need be no more than

a simple sentence or a box checked in an application transmittal letter

or reply cover sheet. Accordingly, small entity status could be

established without submission of any of the current small entity

statement forms (PTO/SB/09-12) that embody and comply with the current

requirements of 37 CFR 1.27 and which are therefore now used to

establish small entity status.

An applicant filing a patent application and paying the exact small

entity basic filing fee would automatically establish small entity

status for the application even without any further written assertion

of small entity status. If payment is made, but it is not the exact

small entity basic filing fee required and a written assertion of small

entity status is not present, the PTO would mail a notice of

insufficient filing fees as in current practice. The PTO would not

consider a basic filing fee submitted in an amount above the correct

small entity basic filing fee, but below the non-small entity filing

fee, as a request to establish small entity status unless an additional

written assertion is also present. Of course, the submission of a basic

filing fee below the correct small entity basic filing fee would not

serve to establish small entity status. Where an application is

originally filed by a party, who is in fact a small entity, with an

authorization to charge fees (including filing fees) and no indication

(assertion) of entitlement to small entity status, that authorization

would not be sufficient to establish small entity status unless the

authorization was specifically directed to small entity filing fees.

The general authorization to charge fees would continue to be acted

upon immediately and the full (not small entity) filing fees would be

charged with applicant having two months to request a refund by

asserting entitlement to small entity status. This would be so even if

the application were a continuing application where small entity status

had been established in the prior application.

Once small entity status is established in an application, any

change in status from small to non-small, would also require a specific

written assertion to that extent, similar to current practice.

The party who could request small entity status would be any party

permitted by PTO regulations to pay the basic filing fee and file a

paper in the application. This eliminates the additional requirement of

obtaining the signature of an appropriate party other than the party

prosecuting the application. By way of example, in the case of three

pro se inventors for a particular application, any of the three

inventors upon filing the application could pay a small entity basic

filing fee and thereby establish small entity status for the

application. For small business concerns and non-profit organizations,

the practitioner could supply the assertion rather than the current

requirement for an appropriate official of the organization to execute

a small entity statement form.

PTO policy and procedures already permit establishment of small

entity status in certain applications through simplified procedures.

For example, small entity status may be established in a continuing or

reissue applications simply by payment of the small entity basic filing

fee if the prior application/patent had small entity status. See 37 CFR

1.28(a)(2). The instant concept of payment of the basic statutory

filing fee to establish small entity status in a new application is

merely a logical extension of that practice.

There may be some concern that elimination of the small entity

statement forms will result in applicants requesting small entity

status who are not actually entitled to such status. On balance, it

seems that more errors occur where small entity applicants who are

entitled to such status run afoul of procedural hurdles formed by the

requirements of 37 CFR 1.27 than the requirements help to prevent

status claims for those who are not in fact entitled to such status.

Correction of any inadvertent and incorrect establishment of small

entity status would be by way of a paper under 37 CFR 1.28(c) as in

current practice.

Continued Obligations for Thorough Investigation of Small Entity

Status: Applicants should not confuse the fact that the PTO is making

it easier to qualify for small entity status with the need to do a

complete and thorough investigation and to assert that they do in fact

qualify for small entity status. It should be clearly understood that,

even though it would be much easier to assert and thereby establish

small entity status, applicants would continue to need to make a full

and complete investigation of all facts and circumstances before making

a determination of actual entitlement to small entity status. Where

entitlement to small entity status is uncertain it should not be

claimed. See MPEP 509.03. The assertion of small entity status (even by

mere payment of the exact small entity basic filing fee) is not

appropriate until such an investigation has been completed. Thus, in

the previous example of the three pro se inventors, before one of the

inventors could pay the small entity basic filing fee to establish

small entity status, the inventor would need to check with the other

two inventors to determine whether small entity status was appropriate.

The intent of 37 CFR 1.27 is that the person making the assertion

of small entity status is the person in a position to know the facts

about whether or not status as a small entity can be properly

established. That person, thus, has a duty to investigate the

circumstances surrounding entitlement to small entity status to the

fullest extent. Therefore, while the PTO is interested in making it

easier to claim small entity status, it is important to note that small

entity status must not be claimed unless the person or persons can

unequivocally make the required self-certification.

Consistent with 37 CFR 1.4(d)(2), which sets forth that for the

presentation to the PTO (whether by signing, filing, submitting, or

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

non-practitioner, the payment of a small entity basic filing fee would

constitute a certification under 37 CFR 10.18. Thus, a simple payment

of the small entity basic statutory filing fee will activate the

provisions of 37 CFR 1.4(d)(2) and, by that, provoke the self-

certification as set forth in 37 CFR 10.18(b), regardless of whether

the party is a practitioner or non-practitioner.

[[Page 53502]]

2. Requiring separate surcharges and supplying filing receipts (37 CFR

1.53)

Summary: The PTO is considering charging separate surcharges in a

nonprovisional application for the delayed submission of an oath/

declaration, and the application filing fee, and issuing another filing

receipt, without charge, to correct any errors or to update filing

information, as needed.

Specifics of Change Being Considered: The PTO would charge a

separate surcharge (currently $130) for each missing part item that is

submitted in a delayed manner. Thus, the delayed submission of both an

oath/declaration under 37 CFR 1.63, and the payment of the basic filing

fee in a nonprovisional application filed under 35 U.S.C. 111(a), would

result in the imposition of two surcharges (totaling $260). The change

under consideration would not apply to provisional applications filed

under 35 U.S.C. 111(b) and 37 CFR 1.53(c). In addition, as the basic

national fee must be submitted by the expiration of the applicable

twenty- or thirty-month period in 35 U.S.C. 371(b) in a PCT

application, the change under consideration would also be inapplicable

to applications filed under the PCT.

While the PTO would be charging a separate surcharge for each

missing part submitted in a delayed manner, the PTO would also be

providing three new user-friendly services which were requested by, and

would provide benefits that are desired by, our customers. The three

new user-friendly services are: (1) issuing a corrected filing receipt

without the fee presently required by 37 CFR 1.9(h) when an oath/

declaration, and/or the payment of the application filing fee are

submitted in a delayed manner; (2) issuing a corrected filing receipt

without the fee presently required by 37 CFR 1.19(h), and without a

question as to fault, for any error in the filing receipt; and (3)

placing a copy of each filing receipt supplied to the applicant in the

application file as evidence of issuance of the filing receipt.

Background: Approximately thirty-one per cent of all nonprovisional

applications filed are missing parts applications, that is, an

application filed without an executed oath/declaration and/or the

application filing fee, with a substantial burden being placed on the

PTO to provide additional handling, storage and processing for these

missing part applications. Neither the payment of the application

filing fee nor an oath/declaration in compliance with 37 CFR 1.63 is

needed for an application to meet the minimum requirements to be

accorded a filing date in a nonprovisional application. See 37 CFR

1.53(b). Currently, the PTO charges a single surcharge of $130 for the

filing of an oath/declaration or the filing fee or both on a date later

than the application filing date. At present, the PTO issues a filing

receipt at the time a determination is made that an application meets

the minimum requirements to receive a filing date. The filing receipt

includes, among other things, bibliographic information (e.g.,

inventive entity/application identifier, title, continuing data,

inventor's city and state address, foreign priority, attorney docket

number), while also denoting, among other things, the application

number, filing date and receipt of the application filing fee. A

``Notice of Omitted Item(s)'' (form PTO-1669) or a ``Notice To File

Missing Parts'' (PTO-1533), if needed, are mailed separately. A

``Notice of Omitted Items'' is mailed by the PTO in an application

wherein the application papers so deposited have been accorded a filing

date, but a portion (e.g., some of the page(s) of or figure(s) of

drawings described in the specification) has been omitted from the

submitted application parts. See Change in Procedure Relating to an

Application Filing Date; Notice, 61 FR 30041 (June 13, 1996), 1188 Off.

Gaz. Pat. Office 48 (July 9, 1996), and MPEP 601.01(d)-(h). A ``Notice

To File Missing Parts'' is mailed by the PTO in an application wherein

a part of the application (e.g., the oath/declaration, or the

appropriate application filing fee) has been omitted on filing. See

Changes in Practice in Supplying Certified Copies and Filing Receipts;

Notice, 1199 Off. Gaz. Pat. Office 38 (June 10, 1997), and MPEP

601.01(a). Examination of the application does not begin until all the

required parts (e.g., filing fee, and oath/declaration) are received.

See 37 CFR 1.53(h).

In addition, the PTO recently amended 37 CFR 1.41 and 1.53

(effective December 1, 1997) to provide that the names of the inventors

are no longer required in order for an application to meet the minimum

requirements to be accorded a filing date. See Changes to Patent

Practice and Procedure; Final Rule Notice, 62 FR 53131, 53186-88

(October 10, 1997), 1203 Off. Gaz. Pat. Office 63, 111-13 (October 21,

1997). The names of all the inventors are taken from an executed oath/

declaration timely submitted in compliance with 37 CFR 1.63, with the

inventive entity being set at that time, 37 CFR 1.41(a)(1). The filing

receipt is mailed even if an oath/declaration in compliance with 37 CFR

1.63, the application filing fee, or the actual names of the inventors

have not been submitted on filing. In an application which is entitled

to a filing date but not naming the actual inventors on filing, an

identifier (e.g., the attorney's docket number, or all or a part of the

names of the actual inventors) may be used to identify the application,

37 CFR 1.41(a)(3). In the past, upon the filing of an oath/declaration

in compliance with 37 CFR 1.63, the PTO did not issue a corrected

filing receipt, but only updated PTO records as to the actual inventors

for the application. If (1) the inventive entity being submitted by the

later filed oath/declaration was different from the identifier/

inventive entity used to identify the application on filing and (2)

applicant(s) desired a corrected filing receipt containing the

corrected information or correction of any other information contained

thereon (not due to PTO error), then applicant(s) had to request such

in a separate paper filed with the PTO along with the requisite fee

under 37 CFR 1.19(h). Further, where a proper small entity statement

was not submitted until after the mailing of the filing receipt and a

corrected filing receipt was desired to show small entity status based

on the small entity statement submitted after the mailing of the filing

receipt, a request for such a corrected filing receipt must have been

filed along with the requisite fee under 37 CFR 1.19(h).

Separate surcharges: The cost for processing these missing parts

applications has increased. Further, the separate submission of each

missing part in a delayed manner causes the PTO to perform double the

amount of work, as the application would be twice processed for a

submitted missing part, with presently only one surcharge being

required. Those who delay in submitting either of the items noted above

should bear the costs. Patent Business Goal (5) is to assess fees

commensurate with resource utilization and customer efficiency. In

support of that goal, it is being considered that a separate surcharge

be required for the filing of an oath/declaration in compliance with 37

CFR 1.63, and for the payment of the application filing fee on a date

later than the application filing date. Therefore, if both the oath/

declaration and the application filing fee were submitted on a date

later than the application filing date, a payment of $260 ($130 for the

late filing of the oath/declaration, and $130 for the late filing of

the application filing fee) in current fees would be due on the

application.

No incentive currently exists for the submission of the basic

filing fee on filing if an executed oath or declaration is not also

available for submission.

[[Page 53503]]

This change would encourage applicants to submit the basic filing fee

on filing, even if an executed oath or declaration is not available for

submission. Patent Business Goal (1) is to reduce PTO processing time

to twelve months or less for all inventions. This change, in

combination with the change under consideration in topic 3, would

reduce pre-examination processing time, since it would encourage the

submission on filing of an application in condition for examination,

even if an executed oath or declaration is not available for submission

on filing.

Three new services: While the PTO would be charging a separate

surcharge for each missing part submitted in a delayed manner, the PTO

would also be providing three new user-friendly services which were

requested by our customers and provide benefits that are desired by our

customers. As a first new service, in addition to the filing receipt

being mailed at the time the application is accorded a filing date, a

corrected filing receipt would always be mailed to reflect receipt of

the oath/declaration in compliance with 37 CFR 1.63, and/or the payment

of the application filing fee when they are submitted. No longer would

applicant have to file a request for a new filing receipt, to pay a

separate fee for it per 37 CFR 1.19(h), or submit a status letter to

see if PTO records were updated due to the filing of the oath/

declaration. The corrected filing receipt should reflect the actual

inventive entity of the application, if it was mailed in response to

the receipt of the oath/declaration in compliance with 37 CFR 1.63.

Patent Business Goal (4) is to exceed our customers' quality

expectations, through the competencies and empowerment of our

employees. This new service would be in support of that goal. The PTO

has begun this first new service in anticipation of the increase in

surcharge fees and to better serve our customers' needs.

As a second new service, if there is an error in the data printed

on the filing receipt and a request for a corrected receipt is

submitted, the PTO would issue a corrected filing receipt without a fee

and without a question as to fault. Patent Business Goal (1) is to

reduce PTO processing time to twelve months or less for all inventions.

Patent Business Goal (4) is to exceed our customers' quality

expectations, through the competencies and empowerment of our

employees. Without having to determine who caused the error in the

filing receipt, corrected filing receipts would be issued faster and

with less inconvenience to all, which would be in support of those

goals. Further, the PTO has received substantial feedback that timely

receipt of an accurate filing receipt is of great importance to our

customers. This second new service is in direct response to this

repeated message. Again, the PTO has already begun this second new

service in anticipation of the increase in surcharge fees and to better

serve our customers' needs.

As a third new service, every time a filing receipt is issued, the

PTO would place a copy of the filing receipt in the application file as

evidence thereof. Today, a copy of a filing receipt is not placed in

the application file, irrespective of the reasons for its issuance. By

always placing a copy of the filing receipt in the application file, it

will be easier to later determine whether there is still an error in

the filing receipt in question, or whether a filing receipt or a

corrected filing receipt was actually mailed. Further, since a copy of

the filing receipt would now be located in the application file, the

time for the PTO to answer questions regarding a particular filing

receipt would be greatly reduced. Patent Business Goal (4) is to exceed

our customer's quality expectations, through the competencies and

empowerment of our employees. This would be in support of that goal.

3. Permitting delayed submission of an oath or declaration, and

changing the time period for submission of the basic filing fee and

English translation (37 CFR 1.52, 1.53)

Summary: The PTO is considering amending 37 CFR 1.53 to provide

that an executed oath or declaration for a nonprovisional application

would not be required until the expiration of a period that would be

set in a ``Notice of Allowability'' (PTOL-37). The PTO is also

considering amending 37 CFR 1.52 and 1.53 to provide that the basic

filing fee and an English translation (if necessary) for a

nonprovisional application must be submitted within one month (plus any

extensions under 37 CFR 1.136) from the filing date of the application.

Specifics of Change Being Considered: The PTO is considering

amending 37 CFR 1.53 to provide that an executed oath or declaration

for a nonprovisional application would not be required until the

applicant is notified that it must be submitted within a one-month

period that would be set in a ``Notice of Allowability,'' provided that

the following are submitted within one month (plus any extensions under

37 CFR 1.136) from the filing date of the application: (1) the name(s),

residence(s), and citizenship(s) of the person(s) believed to be the

inventor(s); (2) all foreign priority claims; and (3) a statement

submitted by a registered practitioner that: (a) an inventorship

inquiry has been made, (b) the practitioner has sent a copy of the

application (as filed) to each of the person(s) believed to be the

inventor(s), (c) the practitioner believes that the inventorship of the

application is as indicated by the practitioner, and (d) the

practitioner has given the person(s) believed to be the inventor(s)

notice of their obligations under 37 CFR 1.63(b). In addition, the PTO

is considering requiring an applicant to file a continuing application

to file an executed oath or declaration naming an inventorship

different from that previously stated by the practitioner once

prosecution in an application is closed.

The PTO is also considering amending 37 CFR 1.52 and 1.53 to

provide, by rule, that the basic filing fee and an English translation

(if the application was filed in a language other than English) for a

nonprovisional application must be submitted within one month (plus any

extensions under 37 CFR 1.136) from the filing date of the application.

Applicants will not be given a notice (e.g., a ``Notice To File Missing

Parts'' (PTO-1533)) that the basic filing fee is missing or

insufficient, unless the application is filed with an insufficient

basic filing fee that at least equals the basic filing fee that was in

effect the previous fiscal year. Finally, the filing receipt will

indicate the amount of filing fee received and remind applicants that

the basic filing fee must be submitted within one month (plus any

extensions under 37 CFR 1.136) from the filing date of the application.

These changes will permit the PTO to virtually eliminate the

current practice of mailing notices (e.g., a ``Notice To File Missing

Parts'') during the initial processing of a nonprovisional application

to require submission of an oath or declaration, basic filing fee, or

an English translation.

Background: As discussed above, 37 CFR 1.53(b), as amended

effective December 1, 1997, does not require that a nonprovisional

application under 35 U.S.C. 111(a) include an executed oath or

declaration under 37 CFR 1.63, the names of the inventor(s), any filing

fee, or English language application papers for the application to meet

the minimum requirements to be accorded a filing date. The PTO,

however, does not examine the application until an executed oath or

declaration under 37 CFR 1.63 (naming the inventor(s)), the filing fee,

and English language application papers are submitted. If an

[[Page 53504]]

executed oath or declaration under 37 CFR 1.63, filing fee, or English

language application papers are not submitted with the filing of a

nonprovisional application, the PTO will mail a notice requiring that

they be filed (with a surcharge) within two months from the mail date

of the notice (plus any extensions under 37 CFR 1.136) to avoid

abandonment.

The PTO has received numerous comments from the public indicating

that there is great difficulty in filing an executed oath or

declaration (e.g., at times it is difficult to determine the names of

the actual inventor(s) or it may be difficult to locate the

inventor(s)), and that pre-examination processing of a nonprovisional

application is a long burdensome process. Difficulty in obtaining the

signatures of all the inventor(s) has often resulted in a petition (and

fee) under 37 CFR 1.47 (filing when an inventor refuses to sign or

cannot be reached). The PTO cannot eliminate the requirement for an

oath or declaration in a nonprovisional application without a statutory

change. See 35 U.S.C. 111(a)(2)(C) and 115. The Commissioner, however,

has latitude as to when an oath or declaration and the filing fee must

be submitted for a nonprovisional application. See 35 U.S.C. 111(a)(3).

Discussion: The PTO is considering amending 37 CFR 1.53 to provide

that an executed oath or declaration for a nonprovisional application

is not required until the expiration of a period that would be set in a

``Notice of Allowability'' (plus extensions under 37 CFR 1.136), rather

than prior to examination of the application. Permitting delayed

submission of the oath or declaration until the expiration of a period

set in the mailing of a ``Notice of Allowability'' would allow

practitioners additional time to have the oath or declaration executed

by all the inventor(s). In addition, if the invention turns out to be

unpatentable, no signatures for the oath or declaration would ever be

needed.

If an oath or declaration is not submitted within one month (plus

any extensions under 37 CFR 1.136) from the filing date of the

application, the PTO will require that within this period a registered

practitioner: (1) submit the name(s), residence(s), and citizenship(s)

of the person(s) believed to be the inventor(s); (2) submit all foreign

priority claims; and (3) make and submit a statement that he or she has

made an inventorship inquiry (i.e., ascertain the inventorship of the

application to the best of his or her knowledge) and that he or she

believes that the inventorship is in fact those person(s) so identified

as the person(s) believed to be the inventor(s). In addition, the

practitioner must state that he or she has sent such person(s) a copy

of the application (specification, including claims, and drawings)

filed in the PTO, and given such person(s) notice of their obligations

to review and understand the contents of the application and of their

duty to disclose to the PTO all information known to the person to be

material to patentability under 37 CFR 1.56. See 37 CFR 1.63(b).

The surcharge set forth in 37 CFR 1.16(e) would also be required if

the oath or declaration is submitted on a date later than the filing

date of the application, regardless of whether the oath or declaration

is filed before a ``Notice of Allowability'' is mailed.

For examination purposes, it would be presumed that the inventive

entity is that set forth by the practitioner in the application as

forwarded to the examiner. As discussed above, all claims for foreign

priority benefits under 35 U.S.C. 119 or 365 would be submitted prior

to examination. The examiner needs this foreign priority claim

information to determine whether an additional ``back-up'' rejection is

appropriate. See MPEP 904.02. If an oath or declaration is omitted on

filing, the first Office action would inform applicant(s) (e.g.,

through an attached Notice of Informal Application, PTO-152 ) that an

oath or declaration is outstanding.

37 CFR 1.48(f)(1) would continue to provide that, in an application

not including an executed oath or declaration, the submission of an

executed oath or declaration (such as in reply to a ``Notice of

Allowability'') naming an inventorship different from that previously

indicated by the practitioner as the person(s) believed to be the

inventor(s) would operate to correct the inventorship without the need

for the filing of a petition under 37 CFR 1.48. Nevertheless, this

action may cause examination-related problems with the application, in

that upon entry of such an oath or declaration the examiner would have

to consider whether new rejection(s) are necessary under, for example,

35 U.S.C. 102(a) (``invention * * * by others''), or 102(e)

(``invention * * * by another''), or 103/102(a) or (e). Therefore, the

PTO is considering requiring a processing fee (in addition to the

surcharge) for submission of such an oath or declaration after the

first Office action but before the close of prosecution on the merits.

In addition, if such an oath or declaration necessitates that a new

ground of rejection be made, the next Office action containing the new

ground of rejection, absent anything to the contrary, may be made

final. See MPEP 706.07(a). The PTO is also considering prohibiting the

submission of such an oath or declaration that names an inventorship

different from that previously indicated by the practitioner as the

person(s) believed to be the inventor(s) after prosecution on the

merits has closed (e.g., after a final Office action, allowance, or

action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)), and

requiring that a continuing application be filed in order to permit

entry of such an oath or declaration.

The right to prosecute an application (e.g., appoint a

representative by a power of attorney or authorization of agent) flows

from ownership of the application, which in turn flows from

inventorship. In the absence of an assignment the inventor has the

right to conduct prosecution of the application (even if the

application was prepared and filed by the company for whom the inventor

works). Where there is an assignment, the assignee may intervene

pursuant to 37 CFR 3.71 and conduct the prosecution to the exclusion of

the named inventors. In a large percentage of applications, inventors

execute an assignment when the oath or declaration under 37 CFR 1.63 is

executed, and appoint representatives as part of the oath or

declaration.

Delaying execution of the oath or declaration will, most likely,

also encourage delaying execution of the assignment. 37 CFR 3.71

requires an actual assignee of record and does not provide a right of

prosecution for parties having an expectation of assignment (e.g.,

based on an employment contract or a shop right). Hence, since a delay

in executing the oath or declaration under 37 CFR 1.63 will probably

cause a delay in executing an assignment, an assignee may be unable to

avail itself of controlling prosecution under 37 CFR 3.71.

A registered practitioner may take some actions in a patent

application by providing his registration number on the paper. See 37

CFR 1.34(b). However, only an attorney or agent that is of record, the

inventor, or the assignee of the entire interest can take certain

actions in an application. For example, only an attorney or agent that

is of record can change the correspondence address. See 37 CFR 1.33(a).

In addition, only an attorney or agent that is of record may execute a

power to inspect. See 37 CFR 1.14(e)(2).

The PTO is also considering amending 37 CFR 1.34(b) to include in

the definition of ``attorney or agent of record'' the attorney or agent

that filed

[[Page 53505]]

the application. With such a change, an appointment as a representative

would not be required before the attorney could change the address in

the application file or authorize another to inspect the patent

application file, among other things. In addition, 37 CFR 1.34(b) would

be amended to provide that a pro se inventor who signs a transmittal

letter for an application is considered to represent all inventors for

the purposes of prosecuting the patent application. Pro se inventors

frequently do not realize that all inventors need to sign each piece of

correspondence to the Office (e.g., each amendment, see MPEP 714.01(a))

and a pro se inventor will frequently have difficulty obtaining the

other inventor's signature during the time provided. With such a

change, pro se applicants that do not have the foresight of appointing

a single representative will have an easier time filing a response to

Office actions.

Additionally, the PTO is considering amending 37 CFR 1.52(d) and

1.53 to provide that an English language translation (if the

application was filed in a language other than English) and the basic

filing fee be submitted no later than one month from the filing date of

the nonprovisional application. This one-month period would be

extendable under 37 CFR 1.136. The current process of mailing notices

(e.g., a ``Notice To File Missing Parts'' (PTO-1533)) which gives a

period (e.g., two months) for submitting the basic filing fee or

English translation in a nonprovisional application would be

eliminated, as: (1) the basic filing fee would be due on filing, or

required with the surcharge under 37 CFR 1.16(e) within one month (plus

extensions under 37 CFR 1.136) from the filing date of the application;

and (2) any English translation (if the application was filed in a

language other than English) would be required with the processing fee

set forth in 37 CFR 1.17(k) within one month (plus extensions under 37

CFR 1.136) from the filing date of the application. Except for the

situation discussed below, there is no apparent justification for the

PTO continuing to mail notices to advise applicants of that which they

should already know: (1) that they did not submit the basic filing fee

with the application; or (2) that they did not file the application in

English.

For example: (1) if the basic filing fee is submitted on filing, no

surcharge under 37 CFR 1.16(e) or extension fee under 37 CFR 1.17(a) is

required; (2) if the basic filing fee is not submitted on filing but is

submitted within one month of the application filing date, the

surcharge under 37 CFR 1.16(e) is required but no extension fee under

37 CFR 1.17(a) is required; and (3) if the basic filing fee is not

submitted on filing or within one month of the application filing date,

but is submitted within six months (the one month that would be

provided by rule plus five additional months that may be obtained

pursuant to 37 CFR 1.136) of the application filing date, the surcharge

under 37 CFR 1.16(e) and appropriate extension fee under 37 CFR 1.17(a)

are required. The processing fee set forth in 37 CFR 1.17(k) is

required whenever the original application is filed in a language other

than English, regardless of when the English translation is submitted.

Exception: In the situation in which an application is filed with

an insufficient basic filing fee (due to a fee increase) that at least

equals the basic filing fee that was in effect the previous Fiscal

Year, the applicant will be given a filing fee deficiency notice, which

notice will set a one-month period (extendable under 37 CFR 1.136)

within which the balance of the current basic filing fee and the

surcharge under 37 CFR 1.16(e) must be filed to avoid abandonment. In

all other situations, the current basic filing fee, if not submitted on

filing, must be submitted with the surcharge under 37 CFR 1.16(e)

within one month (plus any extensions under 37 CFR 1.136) from the

filing date of the application to avoid abandonment of the application.

The filing receipt will indicate the filing fee received and would be

modified to include language reminding applicants that the basic filing

fee must be submitted within one month (plus any extensions under 37

CFR 1.136) from the filing date of the application.

For PCT international applications: The PTO is considering amending

37 CFR 1.494 and 1.495 to provide that an English translation of the

international application, if filed in a language other than English

(35 U.S.C. 371(c)(2)), would be required within one month of the

expiration of the applicable twenty-or thirty-month period in 35 U.S.C.

371(b), which one-month period may be extended under 37 CFR 1.136. The

PTO is also considering amending 37 CFR 1.494 and 1.495 to provide that

an oath or declaration (35 U.S.C. 371(c)(4)) would not be required

until the applicant is notified that it must be submitted within a one-

month period that would be set in a ``Notice of Allowability,''

provided that the following are submitted within one month (which one-

month period may be extended under 37 CFR 1.136) of the expiration of

the applicable twenty-or thirty-month period in 35 U.S.C. 371(b): (1)

the residence of each inventor (the name and citizenship of each

inventor must be provided on the PCT Request); and (2) a statement

submitted by a registered practitioner that: (a) the practitioner has

sent a copy of the application (as filed) to each of the inventors, and

(b) the practitioner has given the inventor(s) notice of their

obligations under 37 CFR 1.63(b). The basic national fee (35 U.S.C.

371(c)(1)) would continue to be required by the expiration of the

applicable twenty-or thirty-month period in 35 U.S.C. 371(b), which

period is non-extendable.

Patent Business Goal (1) is to reduce PTO processing time to twelve

months or less for all inventions. Reducing pre-examination cycle time

of an application and forwarding applications for examination in a

shorter period of time would be consistent with that goal. This change

(in combination with the change to the period within which an oath or

declaration must be submitted) will greatly reduce the number of

notices that the PTO must issue during the pre-examination processing

of new applications. These changes will also result in applications

being initially processed and forwarded for examination in a shorter

period of time, and reduce the amount of storage space used for and

ease the tracking of applications in pre-examination processing.

The PTO considers the changes to permit delayed submission of an

oath or declaration and to require the basic filing fee and any

necessary translation within one month of the application filing date

to be linked, in that together they will permit a great reduction in

the number of notices that the PTO must issue during the pre-

examination processing of new applications. Thus, comments opposing any

change to require the basic filing fee and any necessary translation

within one month of the application filing date should consider that

the PTO will probably not adopt the change to permit delayed submission

of an oath or declaration if the PTO does not also adopt the change to

require the basic filing fee and any necessary translation within one

month of the application filing date.

Questions: The PTO is specifically requesting comments on the

following issues:

1. The submission of an oath or declaration after the first Office

action which changes the names of the inventor(s) from those originally

indicated by the practitioner may cause additional work to be performed

by the PTO, in particular, by an examiner, as set forth above. As a

result, the PTO is considering charging an additional processing fee

for the submission of

[[Page 53506]]

such an oath or declaration, and prohibiting the submission of such an

oath or declaration after the close of prosecution. Would the benefits

gained by the ability to delay the filing of the oath or declaration

outweigh the drawbacks resulting from: (1) the PTO charging a fee for

the submission of such an oath or declaration after the first Office

action but before close of prosecution; and (2) the PTO prohibiting the

submission of an oath or declaration that names an inventorship

different from that previously indicated by the practitioner as the

person(s) believed to be the inventor(s) after the close of

prosecution?

2. Over time, obtaining an executed oath or declaration from all of

the inventors becomes increasingly difficult: inventors may forget

about or lose interest in an application; they may leave the

corporation; and they may become disgruntled. While delaying obtaining

the inventor's signature on an oath or declaration may be initially

beneficial to the practitioner, it would be more difficult for the

practitioner to obtain all of the inventors' signatures on an oath or

declaration at the time of allowance (which may be years after filing).

National applications resulting from a PCT application entering the

national stage have a higher incidence of petitions under 37 CFR 1.47

than national applications filed under 35 U.S.C. 111(a). This may be

caused by delay in filing the oath or declaration, which could be

thirty months after the filing of the PCT application. Therefore,

permitting applicants to delay the submission of an oath or declaration

until the expiration of a period set in a ``Notice of Allowability''

may result in an increase in the number of petitions filed under 37 CFR

1.47. Would the benefits gained by delaying the filing of the oath or

declaration outweigh the drawbacks resulting from the increased

difficulty in obtaining the inventor(s)' signatures on the oath or

declaration, and an increased number of petitions under 37 CFR 1.47 due

to the inability to obtain an inventor's signature? Is it a concern to

applicants that these petitions under 37 CFR 1.47 will be filed during

the publishing (and not pre-examination) process?

3. Delaying submission of the oath or declaration in a PCT

application until the mailing of a ``Notice of Allowability'' would

delay its entry into the national stage. A PCT application is not

accorded a 35 U.S.C. 102(e) date until the applicant fulfills the

requirements of 35 U.S.C. 371(c)(1), (2) and (4), which include filing

an oath or declaration in compliance with 35 U.S.C. 115 and 37 CFR

1.497. See 35 U.S.C. 371(c)(4). Is it a concern that, if an applicant

in a PCT application delays submission of the oath or declaration until

the period set in a ``Notice of Allowability,'' the PCT application

would be accorded a 35 U.S.C. 102(e) date as of the date the oath or

declaration is submitted?

4. Assuming the above-noted change to 37 CFR 1.34(b) is made giving

control of the prosecution to the filer (the attorney or agent that

filed the patent application) and the attorney or agent's client is not

the inventor, can the client (a potential assignee) take actions

allowed an assignee, such as filing a reissue application under 37 CFR

1.172 and submitting a 37 CFR 3.73 statement establishing the right of

an assignee to take action?

5. Assuming the above-noted change to 37 CFR 1.34(b) is made, how

should an attempt by the inventor(s) to appoint another representative

be treated? Should the inventor(s) first be required to file an oath or

declaration under 37 CFR 1.63? Should an actual assignee of the

inventor(s) be allowed to take action in an application and revoke the

attorney of record if an executed oath or declaration of the

inventor(s) has not been filed?

6. Notwithstanding any change to 37 CFR 1.34(a), where the

inventors execute an assignment but not an oath or declaration under 37

CFR 1.63, is the assignment effective so that the assignee can control

prosecution under 37 CFR 3.71 and take necessary action in accordance

with 37 CFR 3.73? Note that if status under 37 CFR 1.47 is accorded, if

the inventor who originally refused to execute the oath or declaration

assigns his interest, the non-signing inventor's assignee cannot

control prosecution of the application even if the inventor executes a

declaration. Who should the attorney or agent be understood to

represent absent an express authorization to act as a representative in

the application, the persons indicated as the inventors or an actual or

potential assignee?

4. Limiting the number of claims in an application (37 CFR 1.75)

Summary: The PTO is considering a change to 37 CFR 1.75 to limit

the number of total and independent claims that will be examined (at

one time) in an application.

Specific Change Being Considered: The PTO is considering a change

to the rules of practice to: (1) limit the number of total claims that

will be examined (at one time) in an application to forty; and (2)

limit the number of independent claims that will be examined (at one

time) in an application to six. In the event that an applicant

presented more than forty total claims or six independent claims for

examination at one time, the PTO would withdraw the excess claims from

consideration, and require the applicant to cancel the excess claims.

This change would apply to all non-reissue utility applications filed

on or after the effective date of the rule change, to all reissue

utility applications in which the application for the original patent

was subject to this change, and to national applications filed under 35

U.S.C. 111(a), as well as national applications that resulted from a

PCT international application.

Discussion: Applications containing an excessive number of claims

present a specific and significant obstacle to the PTO's meeting its

business goals of reducing PTO processing time to twelve months or less

for all inventions. While the applications that contain an excessive

number of claims are relatively few in percentage (less than 5%), these

applications impose a severe burden on PTO clerical and examining

resources, as they are extremely difficult to properly process and

examine. The extra time and effort spent on these applications has a

negative ripple effect, resulting in delays in the processing and

examination of all applications, which, in turn, results in an increase

in pendency for all applications. In view of the patent term provisions

of 35 U.S.C. 154, as amended by the Uruguay Round Agreements Act

(URAA), Pub. L. 103-465, 108 Stat. 4809 (1994), PTO processing time and

pendency are concerns to the PTO and all applicants. Thus, the PTO

considers it inappropriate to continue to permit the proclivity of a

relatively low number of applicants (less than 5%) for excessive claim

presentation to result in delays in examination and unnecessary

pendency for the vast majority of applicants.

Approximately 215,000 utility applications were filed in the PTO in

Fiscal Year 1997. PTO computer records indicate that the approximate

number and percentage of applications filed in Fiscal Year 1997

containing the following ranges of independent and total claims breaks

down as follows:

[[Page 53507]]

------------------------------------------------------------------------

Percentage FY

Applications filed in FY 1997 containing Number 1997 filings

------------------------------------------------------------------------

Over 50 independent claims.............. 11 00.005

Between 41 and 50 independent claims.... 23 00.011

Between 31 and 40 independent claims.... 77 00.358

Between 21 and 30 independent claims.... 275 00.128

Between 16 and 20 independent claims.... 536 00.249

Between 11 and 15 independent claims.... 1,887 00.878

Between 7 and 10 independent claims..... 7,024 03.267

Between 4 and 6 independent claims...... 27,147 12.627

Over 6 independent claims............... 9,833 4.896

Over 500 total claims................... 5 00.002

Between 201 and 500 total claims........ 88 00.041

Between 101 and 200 total claims........ 652 00.303

Between 61 and 100 total claims......... 2,514 01.169

Between 51 and 60 total claims.......... 2,143 00.997

Between 41 and 50 total claims.......... 4,056 01.887

Between 31 and 40 total claims.......... 8,631 04.014

Between 21 and 30 total claims.......... 23,323 10.848

Over 40 total claims.................... 9,458 4.399

------------------------------------------------------------------------

These numbers indicate that over 95% of all applications filed in

Fiscal Year 1997 contained fewer than forty total claims and over 95%

of all applications filed in Fiscal Year 1997 contained fewer than six

independent claims. Thus, the rule change under consideration should

not prevent the overwhelming majority of applicants from presenting the

desired number of total and independent claims for examination. In

addition, the rule change under consideration will benefit the

overwhelming majority of applicants, since it will stop a relatively

small number of applicants from occupying an inordinate amount of PTO

resources.

While the problem with applications containing an excessive number

of claims is now reaching a critical stage, this problem has long

confronted the PTO. In 1926, Commissioner Robertson remarked that

applications containing an excessive number of claims constitute the

greatest abuse confronting the PTO (then the Patent Office). See Ex

parte McCullough, 1927 Dec. Comm'r Pat. 12, 13 (1926). The issuance of

patents containing an excessive number of claims has also long been

considered an abuse of the courts and the public. See Carlton v. Bokee,

84 U.S. (17 Wall) 463, 471-72 (1873) (needless multiplication of

nebulous claims deemed calculated to deceive and mislead the public);

Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1551 n.6, 10

USPQ2d 1201, 1206 n.6 (Fed. Cir. 1989) (presentation of the

infringement issue on an overgrown claims jungle to a jury and judge at

trial is an unprofessional exercise in obfuscation). Put simply,

applications (and the resulting patents) that contain an excessive

number of claims are a problem that has long confronted the PTO, the

courts, and the public.

Historically, this problem (applications containing an excessive

number of claims) has been dealt with on a case-by-case basis, in that

the presentation of an unreasonable number of claims in an application

may result in an undue multiplicity rejection. See MPEP 2173.05(n). The

CCPA has affirmed rejections based upon undue multiplicity when the

degree of repetition and multiplicity'' in the claims ``beclouds

definition in a maze of confusion.'' See In re Chandler, 319 F.2d 211,

225, 138 USPQ 138, 148 (CCPA 1963); see also In re Chandler, 254 F.2d

396, 117 USPQ 361 (CCPA 1958). In subsequent decisions, however, the

CCPA has declined to hold that the presentation of any particular

number of claims is so excessive as to confuse or obscure the

inventions defined by the claims. See In re Wakefield, 422 F.2d 897,

164 USPQ 636 (CCPA 1970); and In re Flint, 411 F.2d 1353, 162 USPQ 228

(CCPA 1969). These subsequent decisions have severely cut back on the

use of rejections based upon undue multiplicity. See Ex parte Sheldon,

172 USPQ 319 (BPAI 1972).

After the 1970s, the PTO balanced the difficulty of making and

defending undue multiplicity rejections with likelihood of its success

on appeal against the burden of just examining applications containing

an excessive number of claims, and generally chose to simply suffer the

burden of examining such applications. Recently, however, this problem

(applications containing an excessive number of claims) has been

exacerbated by the advent of word-processing equipment, which

significantly reduces the skill and effort required to draft and

present a seemingly endless number of claims in an application. The

change during the last twenty years to the index of claims in the

application file wrapper illustrates this point: the file wrapper for

the 1979 series (the 06 series) applications had an index for fifty

claims; the file wrapper for the 1987 series (the 07 series) and 1993

series (the 08 series) applications had an index for 100 claims; the

file wrapper for the 1998 series (the 09 series) now has an index for

150 claims.

For these reasons, it is now time for the PTO to act to limit the

use of excessive numbers of claims in an application. The PTO is

specifically proposing to deal with this problem now on a systemic

basis by limiting, via rulemaking, the number of claims that will be

examined in an application. This proposal supports the PTO business

goals of reducing PTO processing time to twelve months or less for all

inventions, and aligning fees to be commensurate with resource

utilization and customer efficiency.

A rule limiting the number of claims in an application is within

the PTO's rulemaking authority under 35 U.S.C. 6(a) if it ``is within

the [PTO's] statutory authority and is reasonably related to the

purposes of the enabling legislation * * * and does no violence to due

process.'' See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 606, 225 USPQ

543, 252 (Fed. Cir. 1985) (citations omitted).

35 U.S.C. 41(a)(1)(B) provides that an applicant must pay an

additional fee for the presentation of each independent claim in excess

of three and each claim in excess of twenty. This implies that an

applicant is entitled to present more than three independent claims,

and

[[Page 53508]]

more than twenty total claims, but it does not imply that the PTO may

place no limit on the number of claims that an applicant may present.

See Ex parte Jenkins, 1930 Dec. Comm'r Pat. 8 (1930) (that the patent

statute now requires a fee for additional claims does not mean that

there is no end to the number of claims that the applicant may

present). In addition, PCT Rule 6.1 specifically states that ``[t]he

number of claims shall be reasonable in consideration of the nature of

the invention claimed.'' Placing a reasonable limit (e.g., no more than

six independent claims and no more than forty total claims) will: (1)

permit the PTO to more equitably distribute its resources among the

vast number of applications that must be examined each year (35 U.S.C.

131 and 132); and (2) assist the PTO, public, and the courts in

ascertaining what it is that the applicant considers to be the

invention (35 U.S.C. 112, para. 2).

35 U.S.C. 131 and 132 require the PTO to examine the more than two

hundred thousand applications that are filed each year, and 35 U.S.C.

282 provides that each claim of the patents resulting from these

applications is presumed to be valid, each independently of the others.

It is the PTO's goal to issue patents containing claims whose validity

is based not solely upon presumptions resulting from the patent statute

and PTO regulations, but based upon the actuality that each claim of

the applications resulting in such issued patents has been subjected to

an effective, high-quality examination. In view of the ever increasing

number of applications filed each year, the PTO has determined that it

must place some limits on the number of total claims and independent

claims that an applicant may present in a single application to ensure

that the PTO continues to issue patents that contain only claims that

have been subjected to such effective, high-quality examination.

Such a rule would bear a reasonable relationship to the provisions

of 35 U.S.C. 112, para. 2, that an application conclude with one or

more claims particularly pointing out and distinctly claiming the

subject matter which the applicant regards as his invention. While 35

U.S.C. 112, para. 2, provides that the claims describe ``the subject

matter which the applicant regards as his invention'' (emphasis added),

it does not preclude the PTO from limiting the claims in regard to

matters of form. See Fressola v. Manbeck, 36 USPQ2d 1211, 1214 (D.D.C.

1995).

As discussed above, the historical basis for undue multiplicity

rejections was that the presentation of an excessive number of claims

in an application generally operated to confuse or obscure the

invention. This problem existed in the nineteenth century (Carlton) and

remains a problem today (Wahpeton Canvas). Limiting the number of

claims in an application will discourage applicants from presenting

claims that confuse or obscure the point of the invention. Thus, such a

rule would advance the statutory goal of 35 U.S.C. 112, para. 2, that

an application or patent conclude with one or more claims particularly

pointing out and distinctly claiming the subject matter which the

applicant regards as his invention. See Fressola, 36 USPQ2d at 1214.

Any change to 37 CFR 1.75 to limit the number of claims in an

application must also take into account the situation in which a single

claim is, in actuality, a plurality of claims (e.g., multiple dependent

claims, Markush claims (see Ex parte Markush, 1925 Dec. Comm'r Pat. 126

(1924)), claims referencing plural sequence listings (see MPEP

2422.04), and claims setting forth (non-Markush) alternative

limitations (see MPEP 2173.05(h)). A multiple dependent claim will be

counted as the number of claims to which direct reference is made in

that multiple dependent claim. See 37 CFR 1.75(c). Limits (for a claim

to be counted as a single claim) would also be placed on: (1) the

number of species that may be embraced within a Markush claim; (2) the

number of sequence listings that may be referenced in a single claim;

and (3) the number of alternative limitations that may be included in a

claim.

The PTO is considering only a limit on the number of claims that

will be examined in a single application, not a limit of the number of

claims that may be presented for the invention(s) disclosed in an

application. Forty total claims with six independent claims should be

sufficient for an applicant to obtain adequate coverage for an

invention. An applicant who is unable to limit him or herself to forty

total or six independent claims in a single application may effectively

obtain examination of additional claims in another application. As the

PTO would expend more of its scarce processing and examination

resources on ten applications containing forty claims each than the PTO

would expend on a single application containing four hundred claims,

the PTO's objective is not to have applicants to spread-out excessive

numbers of claims among multiple applications to increase fee revenue.

The PTO's objective is to encourage the few applicants who currently

present an excessive number of claims in an application to place

reasonable limits on the number of claims presented for examination.

Nevertheless, an applicant would effectively be permitted to

present any number of claims for examination by filing any number of

continuing applications, each application presenting no more than forty

total or six independent claims for examination. Thus, the PTO's

refusal to examine more than forty total or six independent claims in a

single application is not tantamount to a rejection of such claims, as

the excess claims would be examined if presented in another

application. See In re Fressola, 22 USPQ2d 1828, 1831-32 (Comm'r Pat.

1992) (an objection or other requirement is not a rejection if it does

not interfere with applicant's substantive right of expression).

In the extraordinary situation in which it would be more beneficial

to the PTO, the public, and the applicant to permit the applicant to

maintain more than forty claims in a single application (e.g., numerous

species claims depending from a single allowable genus claim), the

applicant may file a petition under 37 CFR 1.183 requesting a waiver of

this limitation. Such petitions would be decided on a case-by-case

basis, and would be subject to such other requirements as may be

imposed. See 37 CFR 1.183.

5. Harmonizing standards for patent drawings (37 CFR 1.84)

Summary: The PTO is considering harmonizing the requirements for

patent drawings in 37 CFR 1.84 with the requirements for drawings in

the Patent Cooperation Treaty (PCT).

Specifics of Change Being Considered: Amending 37 CFR 1.84 to be

more similar to PCT Rule 11.13.

Discussion: The PTO is considering amending 37 CFR 1.84 to

harmonize the standards for drawings in U.S. national applications with

the standards for drawings in Patent Cooperation Treaty (PCT)

applications, which is a well-known and widely accepted standard. The

PTO has received a number of comments complaining that the same

drawings which were approved and printed in PCT published applications

have been objected to under 37 CFR 1.84 in U.S. national applications.

This inconsistency is not understood by patent applicants who feel that

a drawing that is acceptable for publication of a PCT application

should also be acceptable for publication in a U.S. patent. Making

corrections to drawings to comply with unnecessary requirements

increases the cost to the applicant and the time required to respond to

an Office action, both of

[[Page 53509]]

which patent applicants would like to reduce. In response to these

comments, the PTO is looking into replacing 37 CFR 1.84 with the PCT

standards for drawing requirements.

The requirements for drawings in a PCT application are set forth in

four places, namely: (1) PCT Article 7; (2) PCT Rules 7, 9, 10, 11, and

12; (3) the PCT Applicant's Guide, Vol. I/A, pages 24-25 (paragraphs

133-141); and (4) the ``Guidelines for Drawings Under the Patent

Cooperation Treaty (PCT),'' published in the PCT Gazette (No. 7/1978).

Current PTO processing of applications with drawings results in

some unnecessary delays in the handling of those applications contrary

to Patent Business Goal 1 (reducing PTO processing time). For example,

petitions are now required in order to accept black and white

photographs, color drawings or color photographs, and the PTO

processing of these petitions delays the handling of the application by

the examiner. The PCT permits black and white photographs, but does not

permit color photographs or color drawings. Thus, to harmonize with the

PCT, which does not require a petition to allow black and white

photographs, the PTO is considering deleting the requirement for a

petition while providing instead that black and white and color

photographs and color drawings would be permitted where it is

impossible to present in a drawing what is to be shown (e.g.,

crystalline structures). The examiner, however, may require drawings,

where it is possible to present the subject matter in a drawing. For

example, a syringe may be drawn. Thus, an examiner would require an

applicant who has submitted an application for a syringe and which

included a photograph of the syringe to submit a drawing to replace the

photograph. The PTO does not currently envision an examiner requiring

color drawings or photographs in a design or utility application where

black and white drawings or photographs have been submitted.

Question: The drawing standards for PCT applications may not be

clearly understood or known because the requirements are set forth in

the previously identified four different documents, and not everyone

has easy access to these documents. Nonetheless, it is apparent that

compliance with the PCT is easier given the experience of many patent

applicants of having drawings approved in a PCT application, but

objected to in a United States application. Accordingly, if adoption of

the PCT standards for drawings is not supported, comments are requested

as to whether the PTO should keep 37 CFR 1.84 as is, or how it should

be modified, or should the PTO adopt some other standard for the

drawings?

6. Printing patents in color (37 CFR 1.84)

Summary: The PTO is considering printing design and utility patents

that have color drawings or color photographs in color, along with

imposing a fee to cover the extra processing and publication costs.

Specifics of Change Being Considered: The PTO is considering

deleting the current requirement for a petition (and $130 petition fee)

to accept color drawings or photographs. The PTO is also considering

printing in color design and utility patents with color drawings or

color photographs, and charging a fee to recover the PTO's cost of

processing and printing design and utility patents with such color

drawings or color photographs. The cost to the public for ordering

color copies would continue to be governed by 37 CFR 1.19(a)(2) (for

plant patents) and 1.19(a)(3) (for utility patents).

Discussion: The PTO is considering amending 37 CFR 1.84(a) and (b)

to delete the current requirement for a petition (and $130 petition

fee) to accept color drawings or photographs. The PTO is also

considering amending 37 CFR 1.84 to provide for processing and printing

design and utility patents having color drawings or color photographs

in color rather than in black and white. A fee will be required.

Utility and design patents with color drawings or color photographs are

currently printed in black and white, with a note indicating that color

drawings or photographs were present in the application. Where color is

part of applicant's invention, such as where color is a feature of the

claimed invention in a design application, a member of the public

seeking to understand the subject matter that is claimed or an examiner

seeking to understand the invention disclosed in evaluating the patent

as prior art during examination of another application would have to

order a color copy of the patent drawings, thereby incurring delays for

the special handling required. If design and utility applications were

to be printed in color in the same manner as plant patents are printed

in color, the copy of the patent in the search files would be a color

copy and members of the public and examiners would not have to take

additional steps to understand the disclosure of the patent and the

scope of the claims. Patents printed in color would continue to have

legends indicating that drawings are in color so that a person

inspecting a black and white copy thereof would have notice as to the

existence of the color drawings.

Processing a patent in color would incur costs separate from those

incurred in the printing process in that identification of applications

filed in color would need to be made so that the printing contractor

would know the color printing was required. The PTO currently scans the

originally filed application papers in black-and-white images, and may

begin scanning color drawings or photographs included with originally

filed application paper in color images. The examination process may

also be more complex due to questions relating to the accuracy of the

color depiction in color photographs. In addition, printing a patent in

color would currently require an expensive photographic process to

ensure the proper coloring of the drawings, as is currently required

for plant patents. Pursuant to 35 U.S.C. 41(d), the PTO may recover the

cost of the service of making color copies of color drawings or

photographs included in an application as originally filed available as

scanned images and preparing color drawings or photographs as part of

the patent publication process. Charging a fee for such additional

costs (as compared to the normal patent publication process) would be

consistent with Business Goal 5 (assess fees commensurate with resource

utilization).

Accordingly, if design and utility patents are to be printed in

color, patentees would be required to pay the additional fee, and would

not be allowed to not pay the fee or request that the patent be printed

only in black and white. In addition, the two-tier fee system, in which

a higher fee is charged for color copies of a patent (37 CFR

1.19(a)(3)) than for a copy without color (37 CFR 1.19(a)(1)(i)), for

patent copy sales would continue so that customers could obtain a black

and white copy of a patent with color drawings for a reduced fee.

While plant patents are currently printed in color, electronic

copies of plant patents currently displayed with the Automated Patent

System or from CD ROM products are in black and white. The Office has

an ongoing project to create color images of plant patents for

electronic searching and dissemination. Accordingly, if design and

utility patents are printed in color, they also would be available in

color electronically.

[[Page 53510]]

7. Reducing time for filing corrected or formal drawings (37 CFR 1.85)

Summary: The PTO is considering reducing the time period for

submitting corrected or formal drawings from three months to one month

from the mailing of the ``Notice of Allowability'' (extensions of time

under 37 CFR 1.136 being permitted). The PTO is also requesting comment

on the advisability of requiring submission of corrected or formal

drawings upon an indication of allowable subject matter.

Specifics of Change Being Considered: The PTO is considering

amending 37 CFR 1.85(c) to require either that: (1) corrected or formal

drawings be submitted within one month of the mailing of the ``Notice

of Allowability'' (extensions of time under 37 CFR 1.136 being

permitted); or (2) formal drawings be submitted in reply to any Office

action indicating allowable subject matter, and, if a drawing

correction has been required, requiring that corrected drawings be

submitted in reply to the next Office action indicating allowable

subject matter.

Discussion: Currently, 37 CFR 1.85(c) requires corrected or formal

drawings to be filed within a period of three months of the mailing

date of the ``Notice of Allowability,'' which period may be extended up

to six months under 37 CFR 1.136. This causes many problems. First,

permitting corrected or formal drawings to be filed as late as six

months after the mailing of the ``Notice of Allowability'' leads to a

lengthy delay in issuance of patents. Second, the corrected or formal

drawings may be submitted after the payment of the issue fee (which

must be paid within three months from the mail date of the ``Notice of

Allowance and Issue Fee Due''). Thus, if formal or corrected drawings

are not filed before payment of the issue fee, the application must

still be stored and tracked to await the required drawings. This

results in increased processing costs to the PTO, as greater storage

space is needed along with continued tracking and monitoring functions.

Thus, the current process not only causes delays in issuing patents

which is inconsistent with Patent Business Goal 1, reducing PTO

processing to twelve months or less, but it also increases our costs

which is inconsistent with Patent Business Goal 5, assessing fees

commensurate with resource use.

The PTO hopes to address these problems in the following three

ways. First, as discussed with regard to 37 CFR 1.84, the PTO would

like to make drawing requirements consistent with those of the PCT so

as to make it easier to submit drawings which will be approved by the

PTO draftspersons and thereby reduce the burden on the applicant. If

drawing requirements are consistent with those of the PCT, as proposed

with respect to 37 CFR 1.84, applicants would be more likely to submit

formal drawings upon filing or while the application is being examined,

but prior to allowance. These formal drawings should have a greater

chance of being approved by the PTO Draftsperson. Thus, this should

reduce the number of applications that are allowed with drawings that

are not accepted by the PTO Draftsperson. Second, the PTO intends to

encourage drawing corrections and/or formal drawings to be submitted

earlier in the examination process. This is because the PTO intends to

deploy draftspersons into each of the technology centers where it will

be easier for the Draftsperson to review such corrected or formal

drawings without interrupting the examination process. Thus, this

should also reduce the number of applications with drawings that have

not been approved by the PTO Draftsperson. Third, with the current

proposal, the PTO proposes to reduce the time for submitting drawings

to one month from the Notice of Allowability. By reducing the window

for submitting drawings to one month, and then charging for extension

of time fees, applicants will be encouraged to quickly submit the

drawings within the one month period and, more than likely, before

payment of the issue fee, in order to avoid extension of time fees,

which rapidly increase as more extensions are requested. Thus, the

change in the period for submitting corrected/formal drawings under

consideration should have the effect of reducing the number of

applications that have drawing corrections or formal drawings submitted

after the payment of the issue fee.

Question: Should the PTO require corrected or formal drawings to be

filed in reply to an Office action indicating allowable subject matter?

8. Permitting electronic submission of voluminous material (37 CFR

1.96, 1.821)

Summary: The PTO is considering rule changes to permit the

voluntary submission of large computer program listings and nucleotide

and/or amino acid sequence listings in only a machine-readable form.

This would save the handling of heavy and voluminous paper listings.

Specifies of Change Being Considered: Suitable changes would be

made to 37 CFR 1.96 and 1.821 et seq. to: (1) permit machine readable

computer program listings to be submitted as the official copy provided

it is submitted in an appropriate archival medium; (2) permit a

machine-readable submission of the nucleotide and/or amino acid

sequence listings as the official copy provided it is submitted in an

appropriate archival medium; and (3) no longer require the voluminous

paper submissions of computer program listings or nucleotide and/or

amino acid sequence listings.

Background: Since 1990, the PTO has required the submission of the

nucleotide and/or amino acid sequence listings (sequence listings)

associated with biotechnology applications to be presented in computer

readable form on floppy disks, as well as in paper. The sequence

listings, which are often over ten thousand bases in length, are not

susceptible to human eye-searching. The magnetic storage and processing

is therefore the only practical means for examining this very important

branch of technology, which grew by fifty percent in 1997 and is

expected to undergo sustained growth. Not only are the number of

pending applications multiplying, but the number of sequence listings

per application and the size of the sequence listings themselves have

grown by one-hundred percent each year. The PTO recently received a

submission containing twenty-two thousand sequence listings, which

required eight boxes of paper for the sequence listing. The PTO is also

starting to see very long individual sequence listings of over one

million residues. As the genome projects complete more of the genomes

of various organisms, the PTO will see more of these voluminous

applications.

This sequence size expansion has had a significant effect on

electronic storage, but even worse has created paper files of gross

size which are very difficult to manage. The paper printouts are often

over five thousand pages in length, and require boxes to contain them.

Carts carry the applications to the examiners for processing. For

example, the Expressed Sequence Tags (EST) applications include up to

several thousand sequence listings and may be over a foot thick. In

some applications, the file wrappers are falling apart and contain only

the sequence listing, with the specification separately preserved.

Physically storing the applications becomes problematic because the

entire file takes up several cubic feet of space. Since each examiner

may have twenty or more of these applications, the applications may

take up the bulk of an examiner's office. The magnitude of these

problems is expected to increase. For example, an application with ten

[[Page 53511]]

thousand sequence listings could result in one thousand applications of

ten sequence listings each. See MPEP 803.04. Considering that the

growth rate of sequence listings is such that they now approach one

foot per application, this would require one thousand linear feet of

shelf space. With each rack holding twenty-four linear feet, the PTO

would need forty-two (1000/24) racks for the applications resulting

from that one application. Clearly, something needs to be done to

address this onslaught of paper.

The current regulations at 37 CFR 1.821(e) indicate that the

electronic version of the sequence listing is a ``copy'' of the paper

sequence listing, and that the paper sequence listing is the official

copy. In practice, however, the electronic version is the one that

enters the computer database of references, and serves as the basis for

examination, printing and copies. The concurrence of the electronic and

paper version is assured only by a statement of the registered attorney

or agent, and cannot be readily checked without the expensive and

laborious effort usually reserved only for litigation.

Considering the difficulty of maintaining the two independent

versions of the sequence listing, and the irony that the official paper

copy is effectively ignored while the unofficial electronic copy is the

only one that is used, the PTO is proposing that the paper copy be

eliminated in favor of the useful, handy and verifiable computer

readable version.

Difficulties with massive amounts of paper also plague the computer

arts. One of the major problems facing the computer areas is the filing

of applications having several boxes of printed material, which may

include computer program listings, appendices and boxes of prior art.

Often a single examiner may have several similar applications

containing multiple boxes of paper (i.e., programs, appendices and

prior art). Just the short-term storage of these boxes is becoming more

of a headache. For example, if an examiner has three or four of these

applications, he or she may be required to store six to eight boxes of

paper. These boxes are stored either in the examiner's office or in an

empty room if one is available. The examiner is expected to: (1) keep

track of these boxes of materials; (2) physically haul them to his or

her office; and (3) consider and be familiar with thousands of sheets

of paper. Often when related applications are transferred to another

Art Unit, these boxes of materials are misplaced and the applicant is

forced to resubmit the boxes of papers.

Computer program listings often come to the office on numerous

sheets of microfiche. However, the microfiche films are often copied to

paper before printing when a patent is allowed. Since the copies from

the microfiche are not copied to the standards of 37 CFR 1.52, the

applications are often sent back to the examiner as a printer rush,

slowing the publication of the patent.

The PTO may accept electronically filed material in a patent

application, regardless of whether it is considered ``essential'' or

``nonessential.'' The patent statute requires that ``[a]n application

for patent shall be made * * * in writing to the Commissioner.'' 35

U.S.C. 111(a)(1) (emphasis added). With regard to the meaning of the

``in writing'' requirement of 35 U.S.C. 111(a)(1), ``[i]n determining

any Act of Congress, unless the context indicates otherwise * * *,

`writing' includes printing and typewriting and reproduction of visual

symbols by photographing, multigraphing, mimeographing, manifolding, or

otherwise.'' 1 U.S.C. 1 (emphasis added); see also Fed. R. Evid.

1001(1) (writing defined as including magnetic impulse and electronic

recording). An electronic document (or an electronic transmission of a

document) is a ``reproduction of visual symbols,'' and the ``in

writing'' requirement of 35 U.S.C. 111(a)(1) does not preclude the PTO

from accepting an electronically filed document. Likewise, there is

nothing in the patent statute that precludes the PTO from designating

an ``electronic'' record of an application file as the PTO's

``official'' copy of the application.

The recognition of the electronically stored version of the

sequence listings as the official copy is expected to have a minor

consequence on our processing of these applications. Sequence listings

are already required to be submitted in electronic form, and a receipt

system is already in place to handle the acceptance and storage of the

electronic versions. Currently the machine-readable version is the copy

of choice for search, for printing and for reference purposes.

The submission of machine readable versions of computer program

listings, or other voluminous materials, would require the PTO to

establish an appropriate system for accepting and using such

submissions such that the paper versions of such information will no

longer be needed. The submitted archival media may be transferred to

centralized electronic office systems to facilitate in-house processing

of the information.

Discussion of change under consideration: The PTO is considering

revising 37 CFR 1.821 et seq. to permit the voluntary submission of a

machine readable version of the sequence listings to be the official

copy provided it is presented in an appropriate archival medium. The

PTO cannot simply make the current submissions of diskettes the

official copy in view of the regulations requiring a true archival

medium (36 CFR 1228.28(3) and 1234.30). In addition, the PTO is

considering revising 37 CFR 1.96 to permit the voluntary submission of

all computer program listings in machine readable form provided they

are in an appropriate archival medium.

The changes contemplated for sequence listings and computer program

listings would eliminate the need for submissions of voluminous paper

sequence listings and hard to handle and reproduce microfiche computer

program listings. To focus specifically on the PTO's difficult paper

handling problem, and to simplify this project so it can be deployed in

a short time span, only the nucleotide and/or amino acid sequences and

the computer program listings would be accepted in machine readable

format. The rest of the specification of a nonprovisional application

will be submitted in paper in the conventional manner, subject to 37

CFR 1.52 and other applicable regulations.

In addition to permitting the above-mentioned submissions in

nonprovisional applications, the PTO is also considering changing the

rules of practice to permit provisional applications to be submitted in

toto in a machine readable format, again provided that it is presented

in an appropriate archival medium.

This initiative is in support of the Patent Business Goal to reduce

PTO processing time to twelve months or less for all inventions (Goal

1) and to receive applications and publish patents electronically (Goal

3). Specifically, it would reduce the time and effort required to scan

into our electronic archival systems the text of sequence listings and

of computer program listings included in the applications as filed.

Appropriate Archival Media: Regulations promulgated by National

Archives and Records Administration define the acceptable archival

media and formats for transfer and storage of information. See 36 CFR

1234.30 and 1228.28.

Relationship to PTO automation plans: These changes being

considered are understood to be temporary

[[Page 53512]]

solutions to a difficult PTO paper-handling problem.

It should be noted that the PTO is planning for full electronic

submission of applications and related documents by Fiscal Year 2003.

The changes described above are a smaller step in that direction,

permitting the essential, but bulky parts of some applications to be

submitted on an acceptable archival medium.

Question: Other materials may also be subject to these large

submissions, and part of this endeavor would be the identification and

inclusion of definable entities from other technologies that are of a

similar nature. The PTO is requesting the public to suggest examples.

In considering responses to this question, issues of practical

implementation will be given weight. For example, elements of Technical

Appendices or documents of an Information Disclosure Statement may be

flowcharts, bound books or other items not suitable yet for electronic

submission.

9. Imposing limits/requirements on information disclosure statement

submissions (37 CFR 1.98)

Summary: The PTO is considering revising 37 CFR 1.98 to establish

new requirements and/or limits on information submitted as part of an

Information Disclosure Statement (IDS).

Specifics of Change Being Considered: In order to limit IDS

submissions to relevant information and to ensure full consideration of

an IDS by the PTO, the PTO is considering imposing the following

additional requirements for IDS submissions: (1) a statement in the IDS

that each citation has been personally reviewed by the registered

practitioner who represents applicant, or by at least one inventor

where applicant is not represented by a registered practitioner; (2) a

copy of each cited U.S. application; and (3) a unique description of

each citation's importance relative to each independent claim, or

specific dependent claim(s) if that is why it was cited, except that a

description would not be required for: (a) any ten citations, and (b)

any item cited in a corresponding application by a foreign patent

office, PCT international searching authority (ISA), or PCT

international preliminary examining authority (IPEA), provided the

search report or office action in the English language is also

submitted.

The description of each citation would have to set forth a teaching

or showing of a feature relative to the claimed invention which is not

taught or shown by other citations in the IDS or is taught in a

different manner. The description of each citation must be unique to

that citation, in that an applicant would not be permitted to provide a

description of a citation that is merely cumulative to that of other

citations.

Background: Under the current rules (37 CFR 1.56, 1.97 and 1.98),

the PTO is being overwhelmed with voluminous IDS submissions which, in

many situations, make it very difficult, if not impossible, for an

examiner to fully evaluate all of the citations that have been

submitted. This is especially true when the citations involved are

large in size and/or when large numbers of citations have been

submitted. The submission of large numbers of citations and of the

entire content of large citations may be due to the public's perception

that it must submit, in order to ensure compliance with the duty to

disclose requirements of 37 CFR 1.56, even questionable or marginally

related citations (i.e., cited items that are clearly not material to

patentability). The public appears to have taken the view that it

should submit, in compliance with 37 CFR 1.97 and 1.98, even

questionable citations in order to ensure that applicant is viewed by

the courts as having satisfied the duty of disclosure requirements.

MPEP 2001.04 points out as to noncompliance with 37 CFR 1.97 and 1.98

that ``the applicant will have assumed the risk that the failure to

submit the information in a manner that will result in its being

considered by the examiner may be held to be a violation'' by the

courts. MPEP 2004 adds: ``When in doubt, it is desirable and safest to

submit information. Even though the attorney, agent, or applicant

doesn't consider it necessarily material, someone else may see it

differently and embarrassing questions can be avoided''. Thus, an

environment has been established that promotes submission of citations

which might in some way be considered to be sufficiently relevant to

breach the duty of disclosure (once applicant or applicant's counsel

becomes aware of the citation) in order to avoid an inference of

intentional noncompliance. Applicant presumably does not wish to be

placed in a position (in court) of having to explain why a particular

document of which applicant was aware was not deemed relevant enough to

submit. Therefore, even a document of very questionable relationship to

the claims may very well be submitted by applicants (the public), in

order to err on the side of caution.

This approach has created an enormous burden on the PTO and

seriously jeopardizes the PTO's ability to examine applications in a

timely and efficient manner, or achieve its Business Goal to reduce PTO

processing time (cycle time) to twelve months or less for all

inventions (Goal 1). Applicants frequently cite large numbers of

unrelated documents in citation ``dumps'' where applicant does not wish

to expend the time to weed out the unrelated documents from large

groups of documents (for example those obtained by a pre-search or

found in a related U.S. application). In addition, large citations such

as compendiums are submitted where only one or two small unidentified

portions are relevant.

While it may have been intended under 37 CFR 1.97 and 1.98 that

applicant submit questionably related citations, it was never intended

that large numbers of unrelated documents be submitted solely to save

applicant the effort of reviewing each of them to determine their

relevance. Likewise, it was not intended that the entire volume of a

large citation be submitted so that applicant need not take the trouble

to target the one or two relevant portions.

A further concern arises in those situations where current 37 CFR

1.98 permits applicants to not supply copies of cited U.S.

applications. It is a real burden on the examiner to locate and copy

one or more pending applications, and this activity (removal of a cited

application for copying) has the potential for interfering with the

processing and examination of the cited application.

The following are examples of IDS submissions which have placed

inordinate demands on the PTO:

(1) For one family of related applications (of several hundred

applications), applicants have cited almost three thousand items in

each of the several hundred applications.

(2) In another family of five related applications, more than

one thousand items were cited in IDS submissions in each of the

applications. The items cited were not the same for each

application. The five related applications are the children of

numerous other applications, each of which had IDS submissions

citing at least seven hundred items. The examiner presently has in

his office sixteen containers of cited items for these applications,

and stacks of cited items which would fill at least eight more

containers.

(3) A pending application contains a citation of ten related

U.S. applications. Additionally, about eighty-five documents were

cited, including text citations which included sixty-nine pages from

one text book and 137 pages from another. The Examiner noted in his

Office action that these texts appeared to be background related to

the general area of the invention. In addition, some of the cited

documents were listed in more than one of multiple IDSs submitted,

and the additional listings had to be located and crossed through on

the appropriate form PTO-1449 accompanying the IDS.

[[Page 53513]]

While these three examples represent some of the more extreme IDS

submissions, submissions of this nature are not infrequent nor are they

isolated occurrences. Also, the PTO frequently receives IDS submissions

which are not only large submissions, but they contain unrelated or

non-relevant material, thereby making it difficult to identify and

evaluate the more significant citations. In conjunction with this,

there is a practical limit to the number of citations an examiner can

effectively consider, especially where the citations have not been

described and copies have not been supplied (and the more significant

citations are scattered throughout the lengthy IDS submission).

Although the PTO remains sensitive to the need for applicants to

comply with their duty of disclosure under 37 CFR 1.56, the PTO must

deal with the growing burden on PTO resources to handle IDS

submissions. The PTO obviously does not desire to receive bulky,

irrelevant IDSs and ``dumps'' of citations in an application. Also, to

the extent that these burdensome submissions are in fact received, it

is the intent of the PTO to make the information contained in them as

useful to the examiner as is effectively possible. Accordingly, the PTO

is considering imposing new limitations to (a) reduce both the number

as well as the size of citations that are submitted in IDSs, and (b)

impose requirements as to the citations which will make them more

usable by the examiner.

Proposal: The PTO is considering revising 37 CFR 1.98 to impose

three new requirements/limitations as follows:

I. A Statement of Personal Review of Each Citation Submitted in the

IDS Would Be Required

The IDS submitter would be required to state that he/she has

personally reviewed each submitted IDS citation to determine whether or

not that citation is relevant to the claimed invention(s) and is

appropriate to cite to the PTO in the IDS. This statement of personal

review would have to be made by:

A registered practitioner, where applicant is represented by a

registered practitioner, or

At least one of the inventors where applicant is not represented

by a registered practitioner.

II. A Copy of Each Cited U.S. Application Would Have To Be Supplied

The current exception in 37 CFR 1.98(a)(2)(iii) for pending U.S.

applications would be eliminated. Accordingly, 37 CFR 1.98(a)(2) would

require that an IDS include a legible copy of each cited pending U.S.

application.

III. Each Citation Submitted in the IDS Would Have To Be Uniquely

Described

Applicant would have to compare each of the citations to each of

the independent claims, or specific dependent claim(s), in a meaningful

way that is unique to each citation. The description of each citation

would have to point out why applicant believes the citation to be

unique in its teaching/showing relative to the claimed invention(s).

Exceptions to the unique description requirement for each of the

citations are:

(a) An item does not have to be described if--

The item was previously cited (i) by a foreign patent office,

and/or (ii) in a PCT ISA search report or IPEA office action, in a

corresponding application; and

Applicant submits a copy of the search report or office action

where the item was cited (issued by the foreign patent office or

PCT) in the English language;

(b) In addition, up to ten citations do not have to be

described.

It should be noted that no exception to the unique description

requirement will be made for items which were cited in a related U.S.

application, even if that related application claims 35 U.S.C. 120

priority from, or provides 35 U.S.C. 120 priority to, the application

in which the IDS is submitted. In addition, an exception will not be

made for items cited in litigation related to the application.

As to the exception to the unique description requirement made for

ten citations of any type: Where more than one IDS submission is made

in one application, all of the submitted IDS documents will be taken

together as one consolidated IDS. Thus, applicant would not be able to

circumvent the exception for up to ten citations by submitting multiple

but separate IDS submissions. For example, if six U.S. applications and

four patents are cited without descriptions in a first IDS submission,

then all additional items included in any subsequent IDS submission

must be described or they will not be considered by the PTO.

It should be noted that the choice of which ten citations would be

submitted without the unique description is that of the IDS submitter,

and there should be no negative inference as to compliance with the

provisions of 37 CFR 1.56 where it is chosen to submit the more

relevant citations without any description.

Copies of Citations Contain Confidential Information

Pending U.S. applications are an example of items containing

confidential information which might be submitted in an IDS. In

accordance with MPEP 724.02, IDS citations containing confidential

information (e.g., that which is considered by the party submitting

same to be either trade secret material or proprietary material, and

any such information which is subject to a protective order) are to be

clearly labeled as such and are to be filed in a sealed, clearly

labeled, envelope or container. The party submitting an IDS citation

containing information which is confidential may subsequently petition

to expunge that citation from the record as set forth in MPEP 724.05.

Explanation of the Unique Description Requirement for Each Citation

Each item must be individually and uniquely described relative to

each of the independent claims, or, if appropriate, to one or more of

the dependent claims, in a meaningful way. When determining whether

reexamination may be ordered in compliance with In re Portola

Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997), the PTO

would consider a citation described in this manner during a prior

related PTO proceeding to have had ``its relevance to patentability of

any claim discussed.'' See Request for Comments on Interim Guidelines

for Reexamination of Cases in View of In re Portola Packaging, Inc.,

110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997); Notice and Request for

Public Comments; 63 FR 32646, 32646, 1212 Off. Gaz. Pat. Office 13, 13

(July 7, 1998).

Examples of ways to describe a citation (any of which would be

acceptable) are as follows:

(1) For the closest or most related citation(s): Point out the

features of the citation which are similar to the features of each

independent claim. For example--``Of the six ingredients recited in

the claim 1 breakfast beverage, Citation A teaches beverage

ingredients which are similar to the claimed protein, salt and gum.

Citation B teaches beverage ingredients which are similar to claimed

protein, sugar and carbonating agent.''

(2) Point out how the citation contains or teaches the general

inventive concept of each independent claim. For example--``Citation

C teaches the coating method of claim 4 using light to cure the

coating shortly after it is cooled in a wind tunnel.''

(3) Point out how the citation represents the invention upon

which the independent claim is an improvement. For example--

``Citation D shows the entire conveying

[[Page 53514]]

system of claim 7, except for the inventive friction roller placed

between the two mergers.''

(4) Indicate how the citation teaches at least one feature which

is similar to a claim feature that is not already taught. For

example--``Citation E shows a valve that is the same type of valve

set forth in dependent claim 7.''

(5) Indicate where the citation teaches, in a different way, an

already-taught feature which is similar to a claim feature. For

example--``Citation F teaches a force-cooling of the exiting

material (similar to that of dependent claim 8) as opposed to

citation X which taught the cooling as an inherent result of the

material exiting into the air.''

In each situation, an additional explanation would be required of

how each independent claim (or dependent claim(s), if the citation was

for same) patentably defines over the citation.

It is not necessary that the description for each citation be given

as related to all claims of the application. Rather, each citation

would be described as to its relevance vis-a-vis each independent claim

(or specific dependent claim(s) if that is why it was cited). Further,

it is contemplated that the closest citations would be described in the

greatest detail, and the remaining citations compared to the closest

citations.

Impact of Compliance With 37 CFR 1.98, as it Would be Amended

The examiner will fully consider each citation in an IDS which is

in compliance with 37 CFR 1.97 and with 1.98 as it would be amended.

Conversely, the examiner would not be required to consider any citation

in an IDS where the citation is not presented in compliance with 37 CFR

1.97 and 1.98 as it would be amended. It should be noted that the three

requirements set forth above would apply to any citation in an IDS.

Thus, for example, if a related U.S. application is cited in an IDS and

a copy of the specification, including the claims, and the drawings are

not provided, the examiner would not be required to consider that U.S.

application. Further, the PTO will discard copies of any citations that

are submitted where a unique description is required but is not

supplied, or where the statement of personal review is not made.

Prior to discarding the citations, the PTO would notify applicant

that the citations have been refused further consideration. In the

notice to applicant, the PTO would point out why consideration has been

refused and how the submission of the citations could be corrected. As

is currently the practice, the notice may, at the examiner's option, be

set forth in the next Office action on the merits issued by the

examiner or be provided in a separate notice giving the applicant an

opportunity to correct the IDS. See MPEP 609. Thus, the examiner could

delay action on the merits until the corrected IDS is received or the

time for correction has expired. If the notice is included in the next

Office action on the merits, then the application status would advance

with the issuance of that action on the merits. Thus, the timeliness of

the citations (and refusal of consideration for lack of timeliness)

would quite possibly become dependent on a more limiting subsection of

37 CFR 1.97. For example, if the action on the merits is a first Office

action, 37 CFR 1.97(b) will apply to the corrected IDS submission,

while 37 CFR 1.97(a) would have applied to the original IDS submission

(had it been in order). If appropriate correction is made and the

submission is considered timely under 37 CFR 1.97, the citations will

then be considered. If not, the citations would be removed from the

record and discarded. In such a situation, the list of citations (e.g.,

PTO-1449) which was submitted with the IDS (the citations which were

not considered being lined through by the examiner) would be retained

in the application file to serve as a permanent record of what item(s)

was/were cited.

Rationale as to the Contemplated Revision:

I. Statement of personal review of each citation submitted in the IDS

With the requirement for personal review of each citation,

applicants must review an item so that applicant can then make an

informed decision that the item is relevant and appropriate to cite to

the PTO. This would be effected by requiring the attorney, or where

there is no attorney, at least one of the inventors, to do the personal

review. In addition, the examiner should only be required to consider a

citation where the person submitting the citation to the PTO has first

reviewed that citation and determined that the citation is relevant to

the claimed invention(s). If the submitter reviews the citation in its

entirety and determines that the citation is relevant to the claimed

invention(s), then the examiner should consider that citation in its

entirety. If only a portion of the citation is pertinent and thus only

that portion of the citation has been reviewed by the IDS submitter,

then that portion alone should be cited to the PTO, and that portion

alone will be considered by the examiner.

The personal review of each citation is a subjective and individual

determination of which citations the submitter wishes to make of

record, and the reason for doing so is not subject to review. It is

envisioned, however, that the very act of making this determination

should function as a screening process to effectively filter out

marginally related and unrelated citations. As to the requirement to

describe each citation relative to the claims, the PTO believes that

imposing this requirement is reasonable and fair, and is also highly

desirable, because this requirement (coupled with a requirement for

personal review of each citation) would enable the PTO to achieve the

relief it desires by:

(1) Providing meaningful, useful and relevant information to the

examiner, which would greatly facilitate the examiner's evaluation

of each IDS citation and the examiner's making a patentability

determination on each of the independent and dependent claims. Thus,

it would improve the quality of examination, while improving the

efficiency of the examination process;

(2) Providing an incentive to cite only the most relevant

citations (to avoid having to describe marginally related and

unrelated citations). Thus, the citation of large numbers of

marginally related and unrelated items would be diminished or

eliminated; and

(3) Reducing the overall number of IDS citations that are

submitted by eliminating the marginally related and the unrelated

citations.

II. A copy of each U.S. application would have to be supplied

Applicants often do not submit copies of cited pending U.S.

applications listed in IDSs. Applicant may list multiple application

citations in an IDS (sometimes as many as ten or twenty are listed),

and if no copies are supplied, the examiner must make a time-consuming

effort to obtain and copy all of the cited pending applications so that

they can be considered. This will interrupt the examination of the

application whenever the file of a cited pending application is not

available for inspection and copying. In addition, obtaining and

removing the cited application for copying will also interrupt the

examination of the cited application.

III. IDS citations would have to be uniquely described

The present proposal would permit filers of small IDSs (i.e., ten

or less citations) to continue filing IDSs without any description, as

they are currently filed under 37 CFR 1.98. While it is believed to be

unreasonably burdensome for the PTO to consider unduly large numbers of

IDS citations which are not described, the PTO is amenable to dealing

with ten (or less)

[[Page 53515]]

IDS citations which are not described, even though the examiner has no

guidance from applicant as to what is actually shown or disclosed in

the ten citations.

PTO Goals to be Furthered: The proposal being considered is

important to the PTO Goals of reducing PTO processing time (PTO Goal 1)

and enhancing the quality of examination (PTO Goal 4). Requiring copies

of all citations will reduce delays and help the PTO meet its twelve-

month pendency goal. The presence of the copies of cited documents will

permit those citations to be considered by the examiner at the earliest

possible point after their submission and thereby enhance the quality

of the examination. The descriptions of citations will provide for

better quality because the examiner will have a better understanding of

why applicant considers the citation to be relevant (i.e., the citation

will be made more useful to the examiner). Imposing a requirement of a

statement of personal review of the citations will force applicants to

evaluate all possible items being considered for citation to the PTO

such that only the most relevant items will be cited to the PTO, and

correspondingly, it should cut down on or eliminate the large dumps of

citations that the PTO is now receiving. This will save the examiner

time which is presently expended to read and evaluate cumulative and

minimally relevant citations. This time can be better spent evaluating

the more relevant citations, thus resulting in a higher quality of

examination.

The PTO has determined that it must do something to reduce the size

of the voluminous IDS submissions. Suggestions of other options are

welcomed. If another option is suggested, it should explain why and how

that option would be better.

The PTO expects that many will oppose the above-described proposal

for a variety of reasons. These reasons may include, for example,

concerns as to the burden being imposed on applicant to prepare the

IDS, the conflicting time requirements that will create problems (the

need to submit the IDS by a certain date conflicts with the extra time

needed to prepare the descriptions which would be required before the

IDS could be submitted), and concerns about not properly analyzing or

describing a citation (or all the features, embodiments or parts of the

entire disclosure of the citation) or even overlooking a relevant

citation. The comments, however, should be constructive and address how

(and why) some other option(s) would be better, or as effective, while

being more acceptable to the public.

10. Refusing information disclosure statement consideration under

certain circumstances (37 CFR 1.98)

Summary: The PTO is considering revising 37 CFR 1.98 to reserve the

PTO's authority to not consider submissions of an Information

Disclosure Statement (IDS) in unduly burdensome circumstances, even

where all the stated requirements of 37 CFR 1.98 are met.

Specifics of Change Being Considered: An unduly burdensome IDS

submission may be denied consideration even though it complies with 37

CFR 1.98. For example, extremely large documents and compendiums may

not be accepted if submitted. Applicant will, however, be notified and

given an opportunity to modify the submission to eliminate the

burdensome aspect of the IDS.

Background: 37 CFR 1.97 states that information will be considered

by the PTO if it satisfies the provisions of 37 CFR 1.97 and 1.98. In

the above proposal to revise 37 CFR 1.98 (see above), the PTO is

contemplating revision of 37 CFR 1.98 to deal with unduly burdensome

IDS submissions by imposing new requirements/limitations.

It should be noted that even if the rules of practice are revised

as per the above proposal for 37 CFR 1.98, applicants may still cite

compendiums, such as compilations of individual articles, entire

magazines, journals, encyclopedia or technical dictionary volumes,

textbooks, and volumes of technical abstracts. In addition, if a

compendium is submitted as one of the ``excepted ten citations,'' no

description would be required as to the entire compendium. Even though

such a submission might comply with the letter of 37 CFR 1.98,

consideration of the submission would be unduly burdensome to the

examiner. It clearly would not further the PTO mission and goals to

have the examiner consider the entire text of the compendium. Rather,

applicant should be required to submit and describe the specific

section(s) or portion(s) of the compendium which applicant deems to

provide the basis for making the citation, and such a specific citation

would be acceptable.

Therefore, the PTO should have a mechanism to deal with unusual IDS

circumstances where consideration of all or some part of an IDS would

be unduly burdensome to the examiner.

Proposal: The PTO is contemplating revision of 37 CFR 1.98 to

reserve the authority of the examiner to refuse consideration of an IDS

submission, or any part of it, where such consideration would be unduly

burdensome to the examiner (such that the PTO mission and goals would

not be furthered by requiring the examiner to provide consideration).

When an unduly burdensome IDS is submitted, the PTO would notify

applicant that the IDS, or a particular portion of it, has been refused

further consideration. In the notice to applicant, the PTO would point

out why it would be unduly burdensome for the examiner to consider the

IDS (or portion thereof) and how the IDS could be modified to eliminate

its burdensome aspect. As is currently the practice, the notice may, at

the examiner's option, be set forth in the next Office action on the

merits issued by the examiner or be provided in a separate notice

giving the applicant an opportunity to correct the IDS. See MPEP 609.

Thus, the examiner could delay action on the merits until the corrected

IDS is received or the time for correction has expired. If the notice

is included in the next Office action on the merits, then the

application status would advance with the issuance of that action on

the merits. Thus, the timeliness of the citations (and refusal of

consideration for lack of timeliness) would quite possibly become

dependent on a more limiting subsection of 37 CFR 1.97. For example, if

the action on the merits is a first Office action, 37 CFR 1.97(b) will

apply to the corrected IDS submission, while 37 CFR 1.97(a) would have

applied to the original IDS submission (had it been in order). If

appropriate correction is made and the submission is considered timely

under 37 CFR 1.97, the re-submitted citations will then be considered.

If not, the IDS documents objected to as unduly burdensome would be

removed from the record and discarded. In such a situation, the list of

citations (e.g., PTO-1449) which was submitted with the IDS (the

citations which were not considered being lined through by the

examiner) would be retained in the application file to serve as a

permanent record of what item(s) was/were cited.

Examples: Presented are some examples of IDS submissions (in

addition to the compendium submission which is discussed above) that

comply with the letter of 37 CFR 1.98, yet the PTO would, most likely,

regard as unduly burdensome to the examiner:

(1) An IDS presents ten or less citations; however, one or more

of the presented citations is a patent containing more than one

hundred pages. There is no explanation as to the nature of the

relevance of the patent(s) and no specific columns with lines are

identified.

(2) An IDS presents ten related U.S. applications with copies of

voluminous

[[Page 53516]]

records (including litigation documents) and there is no explanation

as to the nature of the relevance nor is there an identification of

specific parts of the application records.

(3) An IDS presents five hundred citations, each uniquely

described relative to the carving-member feature of claim 5 in a

slightly different manner.

(4) Applicant submits five hundred citations to a foreign patent

office in a foreign application. Applicant then submits the five

hundred citations in the corresponding U.S. application as citations

previously cited by a foreign patent office (see the above

discussion of 37 CFR 1.98) together with a copy of the foreign

patent office search report that does not identify relevancy as to

the citations, and without any citation description in the IDS.

The above are non-limiting examples of burdensome IDS submissions

where consideration would be appropriately denied by the examiner.

PTO Goals to be Furthered: This revision being considered is

important to PTO Goals of reducing PTO processing time (PTO Goal 1) and

enhancing the quality of the examination (PTO Goal 4). At present, non-

conforming and unduly burdensome IDSs are interfering with the PTO

effectively carrying out its function of fully considering IDS

documents. This second proposal for revision of 37 CFR 1.98 (coupled

with the above-presented first proposal) would enable the PTO to reject

abusive IDSs and thus permit examination of others in greater detail.

11. Providing no cause suspension of action (37 CFR 1.103)

Summary: The PTO is considering adding an additional suspension of

action practice, under which an applicant may request deferred

examination of an application without a showing of ``good and

sufficient cause,'' and for an extended period of time. The applicant

would be required to waive the confidential status of the application

under 35 U.S.C. 122, and agree to publication of the application.

Specifics of Change Being Considered: Prior to the first Office

action of an application, the applicant may request deferred

examination provided the application is entitled to a filing date, the

filing fee has been paid, any needed English-language translation of

the application has been filed, and all ``outstanding requirements''

have been satisfied, except that the oath or declaration need not be

submitted. If an oath or declaration has not been submitted, the names

of all of the persons believed to be the inventors must, in good faith,

have been identified. Upon request by the applicant, the PTO may defer

examination for a period not to exceed three years. Applicant would be

required to waive his or her right to have the application kept in

confidence under 35 U.S.C. 122, and pay a fee for publication of the

application.

Discussion: Under 37 CFR 1.103(a), an applicant may request

suspension of action of an application ``for good and sufficient cause

and for a reasonable time specified.'' There may be times, however,

when suspension of action is desired by the applicant even though

``good and sufficient cause'' is not present, and also for a period

greater than the six months permitted under MPEP 709. For example, an

applicant may desire deferred examination to obtain time to align

funding, or to resolve ownership or potential licensing issues. To

provide applicants some flexibility in their business affairs, and a

degree of relief from any business constraints due to the ongoing

pendency of an application, the PTO is considering permitting applicant

to request deferred examination solely at the discretion of the

applicant, and for a period of extended length. A showing of ``good and

sufficient cause'' would not be required.

This program is intended to provide better service to the public by

making it possible to defer action on an application merely by asking,

and paying a fee for it to be deferred. The PTO would benefit as well

as the PTO would be better able to redirect its limited examining and

processing resources to other applications in need of more immediate

processing. The suspension may also allow search and/or examination

results on counterpart cases in other countries to be received and

considered.

In contrast to suspension of action under 37 CFR 1.103(a), which

may not be granted for a period exceeding six months without approval

of the group director (see MPEP 709), deferred examination under this

option would continue until applicant requests resumption of

prosecution, or the maximum time permitted for such deferral has

expired.

A request for deferred examination under this option would only be

granted if, in addition to satisfying the formal requirements and

paying the required fee (set to recover PTO costs), applicant waives

his or her right to have the application kept in confidence under 35

U.S.C. 122 and agrees to publication of the application.

The PTO is considering imposing the following requirements for this

deferred examination program

(1) The application must be entitled to a filing date.

(2) The basic application filing fee must have been paid.

(3) Any needed English-language translation of the application must

have been filed.

(4) All ``outstanding requirements'' (e.g., requirements to a

Notice to File Missing Parts) must have been satisfied, except that the

oath or declaration need not be submitted. See the related discussion

on 37 CFR 1.53 where it is indicated that the PTO is considering

changing the rules of practice to permit submission of the oath or

declaration to be deferred until payment of the issue fee.

(5) If an oath or declaration has not been submitted, the names of

all of the persons believed to be the inventors must, in good faith,

have been identified.

(6) A first Office action on the merits must not have been mailed

in the application, or any prior application assigned the same

application number if the application is continued prosecution

application under 37 CFR 1.53(d).

(7) Applicant must submit ``A Request for Deferred Examination''

under this program which includes:

(a) A waiver of his or her right to have the application kept in

confidence under 35 U.S.C. 122, and payment of the fee for publication

of the application;

(b) Payment of the required fee for deferred examination; and,

(c) In a design application, a utility application filed before

June 8, 1995, or a plant application filed before June 8, 1995, a

terminal disclaimer dedicating to the public a terminal part of the

term of any patent granted thereon equivalent to the period of

suspension of the application (this terminal disclaimer must also apply

to any patent granted on any continuing design application that

contains a specific reference under 35 U.S.C. 120, 121, or 365(c) to

the suspended application).

The PTO considered not making this suspension of action provision

inapplicable to any application not subject to the twenty-year patent

term provisions of 35 U.S.C. 154(a)(2). Rather than excluding such

applications from this program, the PTO is considering simply requiring

that a terminal disclaimer for the period of suspension be filed as a

condition of granting a suspension of action under this program in an

application not subject to the twenty-year patent term provisions of 35

U.S.C. 154(a)(2).

[[Page 53517]]

The PTO is further considering the establishment of the following

program guidelines

1. Maximum period of suspension. Because deferral of action would

delay development of final claim form, and in view of the public's

right to early knowledge of patent rights, a maximum time for

suspension would be set. The maximum time period of suspension would be

measured from the filing date of the application, not the date a

request for suspension is granted. The PTO favors a maximum period of

three years from the filing date or earliest filing date for which a

benefit is claimed under 35 U.S.C. 119, 120, 121, or 365. A longer

period would seem excessive, and is seen as permitting an applicant to

unduly delay issuance of the patent.

2. Time of publication. The PTO favors publication as soon as

practicable after the PTO grants the request. This would make the

specification a publication at the earliest possible time.

3. Form of publication. The PTO intends to publish a notice of the

application, and of the suspension of action in the Official Gazette.

The notice would include bibliographic information, an abstract of the

invention, a drawing figure and at least one representative claim. A

copy of the application, as filed, will be produced and made available

to the public in a manner similar to the present Statutory Invention

Registration (SIR) publications. This would include placement in the

PTO's Automated Patent System (APS) and classified search files. Copies

would be fully available to the public.

4. Effect of Publication. The application would be open to the

public on the date of publication. An application, indexed or

classified according to a classification system, and open to public

inspection, with a publication document including an abstract and claim

arranged with other such documents according to the classification

system is available as a prior art publication under 35 U.S.C. 102/103

(i.e., is ``published''). See In re Wyer, 655 F.2d 221, 210 USPQ 790

(CCPA 1981); see also In re Hall, 781 F.2d 897, 900, 228 USPQ 453, 456

(Fed. Cir. 1986) (a dissertation in a library open to public inspection

by the general public, and indexed and cataloged with the other

documents in the library, is available as a publication under 35 U.S.C.

102/103). The published application would not be prior art under 35

U.S.C. 102(e) effective from the filing date of the so-published

application. Obviously, if the application is subsequently issued as a

patent, the patent would be available as prior art under 35 U.S.C.

102(e).

Comments on the Following Questions Are Solicited

1. Should a maximum period for suspension be set for a period of

other than three years?

2. Should the application be required to include an executed oath

or declaration before a request for suspension of action may be

granted? It is noted that the Office is also considering changing 37

CFR 1.53 to permit submission of the oath or declaration to be

deferred.

3. Would publication of the application, coupled with the knowledge

that a patent may be issued in the future, have a chilling effect on

others active in the same field so as to freeze their activities in

this area?

12. Requiring a handling fee for preliminary amendments and

supplemental replies (37 CFR 1.111)

Summary: The PTO is considering imposing a handling fee for certain

preliminary amendments and for all supplemental replies.

Specifics of Change Being Considered: The PTO is considering

replacing the current practice of allowing unlimited preliminary

amendments and multiple supplemental replies to be filed without

requiring any fee with a new practice where a handling fee would be

charged for each preliminary amendment filed later than a specified

time period after the filing date of the application, and for each

supplemental reply that is filed after the initial reply to an Office

action has been filed.

Background: Preliminary amendments and supplemental replies cause

the PTO to perform administrative processing, the cost of which is not

covered by the filing fee. Some preliminary amendments and supplemental

replies cause the PTO to perform examiner rework resulting in increased

pendency time for the application when such submissions are timely

filed but do not reach the examiner prior to the examiner acting on the

application. For example, if a preliminary amendment or supplemental

reply crosses in the mail with a PTO Office action, the PTO must

perform rework including technical support processing of the

submission, and further examination of the application by the examiner,

and a new or supplemental Office action will most likely have to be

prepared and mailed. If the preliminary amendment or supplemental reply

is received by the examiner after the examiner has begun to examine the

application, or even after the examiner's action has been prepared, but

before the Office action was mailed, the examiner would still have to

reconsider, and then revise or even redo the action, whether it was

ready to be mailed or not, in light of the preliminary amendment or

supplemental reply. This may also require an additional search or that

the previous search be redone. See MPEP 714.05. Accordingly, the PTO is

considering revising its patent rules of practice to impose a handling

fee for the filing of certain preliminary amendments and for

supplemental replies to recover the costs associated with these

activities.

Such a change to the patent rules of practice would support the

PTO's business goals of reducing the PTO processing time to twelve

months or less for all inventions, and assessing fees commensurate with

resource utilization and customer efficiency. Processing time in the

PTO would be reduced in that applicants would have an incentive to

promptly file preliminary amendments and to timely file complete

replies to Office actions. The assessment of a handling fee for each

preliminary amendment filed outside of a specified time period, and

each supplemental reply, will offset the costs accrued by the PTO for

extra technical support and examination processing, including the time

spent by the examiner to reconsider, and (re)process, such submissions.

The PTO anticipates that charging a handling fee for such preliminary

amendments and supplemental replies will discourage such filings, thus

resulting in a reduction in the amount of time it normally takes to

complete the examination of an application, which now includes delays

associated with such preliminary amendments and supplemental replies.

The PTO is therefore considering charging a handling fee for each

preliminary amendment filed later than a specified time period after

the filing date of the application and each supplemental reply rather

than banning them in their entirety.

Preliminary Amendments: Current practice permits an applicant to

file preliminary amendments any time prior to the mailing of a first

Office action. This practice often results in a preliminary amendment

crossing in the mail with an Office action. Current practice has also

resulted in complaints (petitions) by applicants when the PTO has

refused to issue a new Office action when a preliminary amendment is

not filed in the PTO before the mailing date of an Office action, but

was mailed to the PTO before the applicant received

[[Page 53518]]

the Office action, since such a preliminary amendment did not cross in

the mail within the meaning of MPEP 714.05. Another area of concern

with preliminary amendments is that some preliminary amendments are

received at the PTO before the mail date of the first Office action,

but not far enough in advance of such mail date that the amendment can

be associated with the application file before the examiner has

completed the first Office action (i.e., filed a few weeks before the

mail date of the Office action). In either scenario, a hardship is

caused on both the Office and applicant due to the preliminary

amendments not being considered. Preliminary amendments also cause the

Office to incur extra expenses in technical support processing of the

amendments, and in most instances, the examiner having to modify and

mail a new Office action. The applicant suffers by having to inquire

about the preliminary amendment not acted upon by the examiner and from

having to request a new examiner's action when a timely filed

preliminary amendment did not reach the file before the examiner's

action was mailed.

An application should be ready for examination when filed, and an

applicant may expect the PTO to take up an application for examination

shortly thereafter. When the PTO reduces its cycle time to twelve

months, applications will receive a first Office action in less than

six months after filing. Therefore an effort should be made to have all

preliminary amendments before the examiner at the time the application

is filed. In the case of a continuing prosecution application (CPA),

since the application could be ready for the examiner to review in as

little as one day from the date the CPA is filed, the timely submission

of a preliminary amendment is of even greater importance.

Accordingly, the PTO is considering charging a handling fee for

each preliminary amendment filed: (1) later than one month from the

expiration of the applicable twenty-or thirty-month period in 35 U.S.C.

371(b) in a PCT application ; (2) later than one month from the filing

date of the application in an application filed under 37 CFR 1.53(b);

and (3) later than the filing date of the application in a continued

prosecution application (CPA) filed under 37 CFR 1.53(d). These time

periods would not be extendable. This handling fee will offset the

handling costs incurred by the PTO, and act as an incentive for

applicants to file an application in condition for examination. If the

handling fee is not paid, the preliminary amendment would merely be

made of record in the file but would not be entered.

Exceptions: Not every preliminary amendment filed outside this time

period would require a handling fee. For example, no handling fee would

be required for any paper submitted in reply to a requirement by the

PTO, either written or oral, such as a request to submit a signed copy

of a paper previously submitted, but which was not signed. Another

example would be when a preliminary amendment is required (e.g., filing

of an English translation from a foreign filed application) as a result

of a ``Notice To File Missing Parts of Application'' (37 CFR 1.53(f)).

Any amendments filed in reply to a ``Notice To File Correct Application

Papers'' would also not require a handling fee. It should be noted,

however, that if any other type of amendment were to be submitted with

the reply to the PTO requirement, which was not specifically required,

then a handling fee would be required for that reply. No handling fee

would be required for any preliminary amendment which is filed solely

for the purpose of reducing the number of claims in an application to

be examined, but amendments deleting some claims and adding new, or

substitute, claims would have to pay a handling fee even if the net

result of the amendment is that fewer claims would be present.

Supplemental Replies: Under current practice, an applicant must

file a timely reply to avoid abandonment under 35 U.S.C. 133 and 37 CFR

1.135, but may then file one or more supplemental replies (which may

include additional arguments, amendments, evidence, or other material)

up until the mailing of the next Office action. This practice

encourages the filing of a reply that, while satisfying the

requirements of 37 CFR 1.111, may not include all of the amendments or

evidence that the applicant seeks to be considered, since the original

reply may be supplemented. 37 CFR 1.111(b), however, provides that a

proper reply by an applicant to an Office action ``must reply to every

ground of objection and rejection in the prior Office action.'' Thus,

no more than one reply to an Office action should be necessary in most

situations.

Accordingly, the PTO is considering a change to the patent rules of

practice to require that all supplemental replies to a non-final Office

action must be filed with a handling fee to be entitled to

consideration. Under this practice, an applicant would still be

permitted to file supplemental replies to an Office action but all

additional costs associated with the processing of the supplemental

reply would be offset by the handling fee that would have to be paid.

If the handling fee is not paid, the supplemental reply would merely be

made of record in the file but would not be entered.

Exceptions: A handling fee would not be required for supplemental

replies filed after a final Office action as such replies are not

automatically entitled to entry. A handling fee would also not be

required when the supplemental reply is filed after reaching an

agreement for such with the examiner.

An example in which a handling fee would not be required would be

when a supplemental reply is filed in response to an agreement reached

with an examiner. In this situation the examiner's interview summary

record should indicate that the filing of a supplemental reply was

approved, and the supplemental reply should clearly indicate that it

was filed after receiving approval from the examiner in order to not be

subject to payment of the handling fee. It should be noted that the

examiner will not be under any obligation to permit the submission of a

supplemental reply without a handling fee.

Handling Fee: As earlier indicated, the PTO is taking the approach

of charging a handling fee for certain preliminary amendments filed

after the application was filed and for each supplemental reply rather

than considering banning them in their entirety.

The PTO incurs costs associated with processing preliminary

amendments and supplemental replies. Depending on when such papers are

filed the costs include not only technical support processing time, but

also additional time on the part of the examiner. In order to offset

the costs accrued by the PTO in processing certain preliminary

amendments filed after the application was filed, or supplemental

replies, the handling fee will be set at the aggregate cost to the PTO

for both administrative and examiner processing time required for the

average preliminary amendment or supplemental reply. It is important to

note that the paying of the handling fee does not guarantee that the

submission forwarded therewith will be considered by the examiner, as

all submissions must still meet the timeliness limitations which

currently exist.

13. Changing amendment practice to replacement by paragraphs/claims (37

CFR 1.121)

Summary: The PTO is considering changing the manner of making

amendments to require that all amendments to the specification

including the claims be presented in the

[[Page 53519]]

form of replacement paragraphs and claims, respectively.

Specifics of Change Being Considered: The PTO is considering

replacing the current system for making amendments in non-reissue

applications with amendment to the specification by replacement

paragraphs and amendment to a claim by a replacement claim. This would

eliminate the PTO's need to enter changes by handwriting in red ink.

Deletions of a paragraph or a claim would be by instruction to cancel.

Replacement paragraphs and claims would be a clean copy that is

printer-ready, which can be optical character recognition (OCR) scanned

during the publishing process. A marked-up copy of the changed

paragraphs or claims, using the applicant's choice of mark-up system,

would also be supplied as an aid to the examiner. All paragraphs in the

specification, including charts, tables, equations, etc., would have to

be numbered. An option to provide substitute specifications would be

retained for submission of extensive changes.

Background: 37 CFR 1.121(a) permits an applicant to amend the

specification, and to a limited degree, the claims, by instructing the

PTO to make insertions or deletions at precise points in the

specification or claims. Alternatively, applicant may choose to cancel

a claim or rewrite a claim in amended form with underlining and

bracketing, designating additions or deletions, respectively. Under

these rules, amendments are often many pages long, involve extensive

and numerous changes to the specification and/or claims, have complex

entry instructions, and sometimes include typographical errors. Entry

of these amendments, especially when words and phrases must be inserted

in hand-written red ink, and many such changes are being made, is very

time-consuming and difficult to perform, frequently leading to entry

errors (including spelling, wording, and entry locations). In addition,

no clean copy of the specification or claims is available for scanning

as part of the patent publication process. Thus, the current amendment

process leads to printed patents being issued which contain many

errors, which is an unsatisfactory situation for both the PTO and

applicants/patentees for a number of reasons. First, the PTO has to

expend valuable resources to make needed corrections via Certificates

of Correction. Second, applicants/patentees want their patents to be

correctly printed, without errors, and they are very disappointed when

they receive patents that do contain errors. Further, while

Certificates of Correction are issued at no cost to applicants/

patentees if the errors are the fault of the PTO, applicants/patentees

must expend a substantial amount of time and effort carefully reviewing

their printed patents, then preparing and submitting requests to the

PTO for any needed corrections. It can be readily seen, therefore, that

the PTO and its customers both feel that there is a real need for

changes to be made to the current system for making amendments so as to

reduce the number and causes of Certificates of Correction.

The PTO has been considering changes to the procedure for making

ame

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