Changes To Implement the Patent Business Goals

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

business goals for the organizations reporting to the Assistant

Commissioner for Patents (Patent Business Goals). 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 Office's business

processes. In furtherance of the Patent Business Goals, the Office is

proposing changes to the rules of practice to eliminate unnecessary

formal requirements, streamline the patent application process, and

simplify and clarify their provisions.

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

comments must be received on or before December 3, 1999. While comments

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

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

held.

ADDRESSES: Comments should be sent by electronic 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 Room 3-C23 of Crystal Plaza 4,

2201 South Clark Place, 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: 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.

SUPPLEMENTARY INFORMATION: The organizations reporting to the Assistant

Commissioner for Patents have established five business goals (Patent

Business Goals) to meet the Office's Year 2000 commitments. The Patent

Business Goals 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 Office 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.

This rulemaking proposes changes to the regulations to support the

Patent Business Goals. A properly reengineered or reinvented system

eliminates the redundant or unnecessary steps that slow down processing

and frustrate customers. In furtherance of the Patent Business Goals,

these proposed changes to the rules of practice take a fresh view of

the business end of issuing patents, and continue a process of

simplification. Formal requirements of rules that are no longer useful

would be eliminated. When the intent of an applicant is understood, the

Office would simply go forward with the processing. The essentials are

maintained, while formalities are greatly reduced. The object is to

focus on the substance of examination and decrease the time that an

application for patent is sidelined with unnecessary procedural issues.

Additionally, the Office desires to continue to make its rules more

understandable, such as by using plain language instead of legalese.

The Office is seeking efficiency by improving the clarity of the

wording of the regulations so that applicants and Office employees

understand unequivocally what is required at each stage of the

prosecution and can get it right on the first try. The Office welcomes

comments and suggestions on this effort.

In streamlining this process, the Office will be able to issue a

patent in a shorter time by eliminating formal requirements that must

be performed by the applicant, his or her representatives and the

Office itself. Applicants will benefit from a reduced overall cost to

them for receiving patent protection and from a faster receipt of their

patents.

Finally, these proposed changes are intended to improve the

Office'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 patent

legislation, or implementation of new automation capabilities), the

Office would have to reconsider its business processes and make such

further changes to the rules of practice as are necessary.

Advance Notice of Proposed Rulemaking

The Office published an advance notice of proposed rulemaking

(Advance Notice) presenting a number of changes to patent practice and

procedure under consideration to implement the Patent Business Goals.

See Changes to Implement the Patent Business Goals; Advance Notice of

Proposed Rulemaking, 63 FR 53497 (October 5, 1998), 1215 Off. Gaz. Pat.

Office 87 (October 27, 1998). The Advance Notice set forth twenty-one

topics on which the Office specifically requested public input:

Topic (1) Simplifying requests for small entity status;

Topic (2) Requiring separate surcharges and supplying filing

receipts;

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

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

English translation;

Topic (4) Limiting the number of claims in an application;

Topic (5) Harmonizing standards for patent drawings;

Topic (6) Printing patents in color;

Topic (7) Reducing time for filing corrected or formal drawings;

Topic (8) Permitting electronic submission of voluminous material;

Topic (9) Imposing limits/requirements on information disclosure

statement submissions;

Topic (10) Refusing information disclosure statement consideration

under certain circumstances;

Topic (11) Providing no cause suspension of action;

Topic (12) Requiring a handling fee for preliminary amendments and

supplemental replies;

[[Page 53773]]

Topic (13) Changing amendment practice to replacement by

paragraphs/claims;

Topic (14) Providing for presumptive elections;

Topic (15) Creating a rocket docket for design applications;

Topic (16) Requiring identification of broadening in a reissue

application;

Topic (17) Changing multiple reissue application treatment;

Topic (18) Creating alternative review procedures for applications

under appeal;

Topic (19) Eliminating preauthorization of payment of the issue

fee;

Topic (20) Reevaluating the Disclosure Document Program; and

Topic (21) Creating a Patent and Trademark Office review service

for applicant-created forms.

See Changes to Implement the Patent Business Goals, 63 FR at 53499,

1215 Off. Gaz. Pat. Office at 89.

Changes Set Forth in the Advance Notice Included in This Notice of

Proposed Rulemaking (Notice)

This notice proposes changes to the rules of practice based upon

the following topics in the Advance Notice:

(1) Simplifying request for small entity status (Topic 1--

Secs. 1.9, 1.27, and 1.28);

(2) Harmonizing standards for patent drawings (Topic 5--Sec. 1.84);

(3) Printing patents in color (Topic 6--Sec. 1.84);

(4) Reducing time for filing corrected or formal drawings (Topic

7--Secs. 1.85 and 1.136);

(5) Permitting electronic submission of voluminous material (Topic

8--Secs. 1.96, 1.821, 1.823, and 1.825);

(6) Imposing limits/requirements on information disclosure

statement submissions (Topic 9--Secs. 1.97 and 1.98);

(7) Requiring a handling fee for preliminary amendments and

supplemental replies (Topic 12--Secs. 1.111 and 1.115);

(8) Changing amendment practice to replacement by paragraphs/claims

(Topic 13--Secs. 1.52 and 1.121);

(9) Creating a rocket docket for design applications (Topic 15--

Sec. 1.155);

(10) Changing multiple reissue application treatment (Topic 17--

Sec. 1.177); and

(11) Eliminating preauthorization of payment of the issue fee

(Topic 19--Secs. 1.25 and 1.311).

The Office has taken into account the comments submitted in reply

to the Advance Notice in arriving at the specific changes to the rules

of practice being proposed in this notice. These comments are addressed

with the relevant proposed rule change in the section-by-section

discussion portion of this notice.

This notice also includes a number of proposed changes to the rules

of practice that are not based upon proposals set forth in the Advance

Notice. This notice proposes changes to the following sections of title

37 of the Code of Federal Regulations: 1.4, 1.6, 1.9, 1.12, 1.14, 1.17,

1.19, 1.22, 1.25, 1.26, 1.27, 1.28, 1.33, 1.41, 1.47, 1.48, 1.51, 1.52,

1.53, 1.55, 1.56, 1.59, 1.63, 1.64, 1.67, 1.72, 1.77, 1.78, 1.84, 1.85,

1.91, 1.96, 1.97, 1.98, 1.102, 1.103, 1.111, 1.112, 1.121, 1.125,

1.131, 1.132, 1.133, 1.136, 1.137, 1.138, 1.152, 1.154, 1.155, 1.163,

1.173, 1.176, 1.177, 1.178, 1.193, 1.303, 1.311, 1.312, 1.313, 1.314,

1.322, 1.323, 1.324, 1.366, 1.446, 1.497, 1.510, 1.530, 1.550, 1.666,

1.720, 1.730, 1.740, 1.741, 1.780, 1.809, 1.821, 1.823, 1.825, 3.27,

3.71, 3.73, 3.81, 5.1, 5.2, 5.12, and 10.23. Additionally, this notice

proposes to amend title 37 of the Code of Federal Regulations by

removing Secs. 1.44 and 1.174, and adding Secs. 1.76, 1.105, and 1.115.

Changes Set Forth in the Advance Notice That Are NOT Included in

This Notice

This notice does not include proposed changes to the rules of

practice based upon the following topics in the Advance Notice:

(1) Requiring separate surcharges and supplying filing receipts

(Topic 2);

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

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

English translation (Topic 3);

(3) Limiting the number of claims in an application (Topic 4);

(4) Refusing information disclosure statement consideration under

certain circumstances (Topic 10);

(5) Providing no cause suspension of action (Topic 11);

(6) Providing for presumptive elections (Topic 14);

(7) Requiring identification of broadening in a reissue application

(Topic 16);

(8) Creating alternative review procedures for applications under

appeal (Topic 18);

(9) Reevaluating the Disclosure Document Program (Topic 20); and

(10) Creating a Patent and Trademark Office review service for

applicant-created forms (Topic 21).

Comments received in response to the Advance Notice on these topics

are addressed below.

Requiring Separate Surcharges and Supplying Filing Receipts (Topic 2)

The Office indicated that it was considering charging separate

surcharges in a nonprovisional application under 35 U.S.C. 111(a) for

(a) the delayed submission of an oath or declaration, and (b) the

delayed submission of the basic filing fee. That is, a single surcharge

(currently $130) would be required if one of (a) the oath or

declaration or (b) the basic filing fee were not present on filing. Two

surcharges (totaling $260) would be required if both the oath or

declaration and the basic filing fee were not present on filing.

Therefore, the absence (on filing) of the oath or declaration or the

basic filing fee would have necessitated a separate surcharge. The

Office also indicated that it was considering issuing another filing

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

information, as needed.

While a few comments supported the proposal (indicating that the

additional services were worth the additional fees), a majority of

comments opposed charging separate surcharges. These included arguments

that: (1) the proposal is simply a fee increase with no advantage to

applicants; and (2) a separate surcharge should be required only if the

oath or declaration and the basic filing fee are submitted separately

because there is no additional cost to the Office to process both the

oath or declaration and the basic filing fee in the same submission.

Response: This notice does not propose changing Sec. 1.53 to charge

separate surcharges in a nonprovisional application under 35 U.S.C.

111(a) for the delayed submission of an oath or declaration, and for

the delayed submission of the basic filing fee.

Permitting Delayed Submission of an Oath or Declaration, and Changing

the Time Period for Submission of the Basic Filing Fee and English

Translation (Topic 3)

The Office indicated that it was considering: (1) Amending

Sec. 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); and (2) amending Secs. 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 Sec. 1.136) from the filing date of the application.

The Office was specifically considering amending Sec. 1.53 to provide

[[Page 53774]]

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 Sec. 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 Sec. 1.63(b). The Office

was also specifically considering amending Secs. 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 Sec. 1.136) from the filing date of the application.

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

Missing Parts of Application'' (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. The filing receipt,

however, would indicate the amount of filing fee received. Further, the

filing receipt would remind applicants that the basic filing fee must

be submitted within one month (plus any extensions under Sec. 1.136)

from the filing date of the application.

While some comments supported this proposed change, a majority of

comments opposed permitting delayed submission of an oath or

declaration; and changing the time period for submission of the basic

filing fee and English translation.

The reasons given for opposition to the proposed change to permit

delayed submission of an oath or declaration included arguments that:

(1) The proposed inventorship inquiry and notification requirements for

practitioners who submitted an application without an executed oath or

declaration would be too onerous; (2) an application should not be

examined until inventorship is settled and the inventors have

acknowledged their duty of disclosure; (3) the delayed submission of an

oath or declaration would cause confusion as to ownership of the

application, which would cause confusion as to who is authorized to

appoint a representative in the application; (4) the delayed submission

of an oath or declaration would increase the difficulty in acquiring

the inventor's signatures on an oath or declaration, which would lead

to an increase in the number of petitions under Sec. 1.47, as well as

an increase in the number of oaths or declarations signed by the legal

representatives of deceased inventors; and (5) the delayed submission

of an oath or declaration would increase the number of certified copies

of an application not having a copy of the executed oath or declaration

(considered undesirable). Some comments suggested that the Office seek

legislation to eliminate the oath requirement of 35 U.S.C. 115.

The reasons given for opposition to the proposed change to the time

period for submission of the basic filing fee and English translation

included arguments that: (1) A one-month period for submitting the

basic filing fee or English translation is too short because applicants

may not know the assigned application number within one month of the

application filing date (i.e., this period should be two or three

months); (2) the period for submitting the basic filing fee or English

translation should be tied to the mail date of the Filing Receipt; and

(3) the public relies upon the current Notice to File Missing Parts of

Application practice to inform applicants as to whether the filing fee

and the oath or declaration has been received by the Office (i.e.,

verify whether the Office has received the basic filing fee and oath or

declaration), and to inform applicants of the period for reply for

supplying the missing basic filing fee and/or oath or declaration.

Response: This notice does not propose changing Secs. 1.52 and 1.53

to provide that: (1) 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); or (2) the basic filing fee and an English translation (if

necessary) for a nonprovisional application must be submitted within

one month (plus any extensions under Sec. 1.136) from the filing date

of the application.

Limiting the Number of Claims in an Application (Topic 4)

The Office indicated in the Advance Notice that it was considering

a change to Sec. 1.75 to limit the number of total and independent

claims that will be examined (at one time) in an application. The

Office was specifically 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 Office would withdraw the excess claims from consideration,

and require the applicant to cancel the excess claims.

While the comments included sporadic support for this proposed

change, the vast majority of comments included strong opposition to

placing limits on the number of claims in an application. The reasons

given for opposition to the proposed change included arguments that:

(1) Decisions by the Court of Appeals for the Federal Circuit (Federal

Circuit) leave such uncertainty as to how claims will be interpreted

that additional claims are necessary to adequately protect the

invention; (2) the applicant (and not the Office) should be permitted

to decide how many claims are necessary to adequately protect the

invention; (3) there are situations in which an applicant justifiably

needs more than six independent and forty total claims to adequately

protect an invention; (4) the proposed change exceeds the

Commissioner's rule making authority; (5) the change will simply result

in more continuing applications and is just a fee raising scheme; (6)

the Office currently abuses restriction practice and this change will

further that abuse; and (7) since only five percent of all applicants

exceed the proposed claim ceiling, there is no problem. Several

comments which opposed the proposed change offered the following

alternatives: (1) Charge higher fees (or a surcharge) for applications

containing an excessive number of claims; (2) charge fees for an

application based upon what it costs (e.g., number of claims, pages of

specification, technology, IDS citations) to examine the application;

and (3) credit examiners based upon the number of claims in the

application. Several comments which indicated that the proposed change

would be acceptable, placed the following conditions on that

indication: (1) That a multiple dependent claim be treated as a single

claim for counting against the cap; (2) that a multiple dependent claim

be permitted to depend upon a multiple dependent claim; (3) that a

Markush claim be treated as a single claim for counting

[[Page 53775]]

against the cap; (4) that any additional applications are taken up by

the same examiner in the same time frame; (5) that allowed dependent

claims rewritten in independent form do not count against the

independent claim limit; (6) that the Office permit rejoinder of

dependent claims upon allowance; and (7) that higher claim limits are

used.

Response: This notice does not propose changing Sec. 1.75 to place

a limit on the number of claims that will be examined in a single

application.

Refusing Information Disclosure Statement Consideration Under Certain

Circumstances (Topic 10)

The Office indicated in the Advance Notice that it was considering

revising Sec. 1.98 to reserve the Office's authority to not consider

submissions of an Information Disclosure Statement (IDS) in unduly

burdensome circumstances, even where all the stated requirements of

Sec. 1.98 are met. The Office was specifically considering an amendment

to Sec. 1.98 to permit the Office to refuse consideration of an unduly

burdensome IDS submission (e.g., extremely large documents and

compendiums), and give the applicant an opportunity to modify the

submission to eliminate the burdensome aspect of the IDS.

While the proposal received support from a significant minority of

the comments, the large majority of comments included strong opposition

to the proposal to revise Sec. 1.98. The reasons given for opposition

to the proposed change included arguments that: (1) The term ``unduly

burdensome'' is not defined objectively; thus, decisions as to whether

a submission is too burdensome for consideration will be subjective;

(2) without a clear definition of ``unduly burdensome'' (to provide a

standard), the proposal would not pass the Administrative Procedure Act

tests of scrutiny; (3) the Office will have to expend time and effort

in deciding the petitions and defending, in court, its subjective

decisions not to consider ``unduly burdensome'' IDSs (thus, the

proposal will cost the Office time in the long run); (4) the proposal

gives the examiner unlimited ability to not consider art submitted due

to the ambiguous standard for refusal of an IDS submission coupled with

the examiner's discretion to advance the status of the application to a

point where the IDS would not be timely even though it is corrected;

(5) the Office's refusal to examine unduly burdensome IDS submissions

despite compliance with the rules (other than the burdensome aspect)

would impose a huge financial and time burden upon applicants to fix

what the examiner deems as unduly burdensome; (6) imposing this new

financial and time burden would be contrary to the stated purpose of

the Office to expedite prosecution and to relieve the burdens on the

examination process; (7) burdensome IDS situations exist, and the

Office should learn to deal with them as a service to its customers and

in order to meet its mission of issuing valid patents (the Office

cannot realistically ignore situations where the IDS documents cited

are complex or lengthy, and nothing can be done about the complexity or

length by applicant); (8) the burdensome IDS problem is not frequent

and the rare unduly burdensome IDS submissions should be addressed on a

case-by-case basis (thus, no rule change is needed); (9) no data has

been presented to show the problem is wide-spread, and more facts are

needed to show the extent and nature of the unduly burdensome IDS

problem; (10) citations should not be discarded from the record where

the unduly burdensome IDS has not been corrected since an original and

only copy of the citation (which is submitted so the examiner can more

fully appreciate the citation) may be very expensive or even impossible

to replace; (11) reducing the size of a citation can make it less

valuable, the submitted ``relevant portions'' (the partial citation)

may be taken out-of-context of the entire citation, and the excerpt

containing the relevant portion would not provide additional assistance

to the examiner as to background, terminology, and alternative subject

matter which may bear on the examination.

Response: This notice does not propose changing Sec. 1.98 to

reserve the Office's authority to not consider submissions of an IDS in

unduly burdensome circumstances, even where all the stated requirements

of Sec. 1.98 are met.

Providing No Cause Suspension of Action (Topic 11)

The Office indicated that it was 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, provided that

the applicant waived the confidential status of the application under

35 U.S.C. 122, and agreed to publication of the application. The Office

was specifically considering a procedure under which the applicant may

(prior to the first Office action) request deferred examination for a

period not to exceed three years, provided that: (1) The application is

entitled to a filing date; (2) the filing fee has been paid; (3) any

needed English-language translation of the application has been filed;

and (4) all ``outstanding requirements'' have been satisfied (except

that the oath or declaration need not be submitted if the names of all

of the persons believed to be the inventors are identified).

The comments included support and opposition in roughly equal

measure to the proposed extended suspension of action procedure. The

reasons given for opposition to the proposal included arguments that:

(1) The ``deferred examination'' of application under an extended

suspension of action and the publication of an application under such

suspension of action would create uncertainty over legal rights; and

(2) the publication provisions of such a suspension of action procedure

amount to an eighteen-month publication system that is not authorized

by 35 U.S.C. 122.

Response: This notice does not propose changing Sec. 1.103 to

provide for extended suspension of action.

Providing for Presumptive Elections (Topic 14)

The Office indicated in the Advance Notice that it was considering

a change to the restriction practice to eliminate the need for a

written restriction requirement and express election in most

restriction situations. The Office was specifically considering a

change to the restriction practice to provide: (1) That if more than

one independent and distinct invention is claimed in an application,

the applicant is considered to have constructively elected the

invention first presented in the claims; (2) for rejoinder of certain

process claims in an application containing allowed product claims; and

(3) for rejoinder of certain combination claims in an application

containing allowed subcombination claims.

While some comments supported this proposed change, a large

majority of comments opposed providing for presumptive elections. The

reasons given for opposition to the proposed change included arguments

that: (1) The commercially important invention may change (or is not

known until) after the application is prepared and filed; (2) the

change will increase cost of preparing an application since the order

of claims must be carefully considered; (3) examiners aggressively

apply restriction, and presumptive elections will increase the number

of restrictions; and (4) the loss of the ability to contest improper

restrictions prior to examination on the merits will lead to less

likelihood of success in persuading

[[Page 53776]]

examiner to withdraw an improper restriction. Several comments which

opposed the proposed change offered as an alternative that the Office

adopt the PCT unity of invention standard in considering restriction.

Several comments which indicated that the proposed change would be

acceptable placed the following conditions on that indication: (1) That

any presumptive election practice not apply to an election of species;

and (2) that an election by presumption apply only if an attempted

telephone restriction requirement is not successful.

Response: This notice does not propose changing Sec. 1.141 et seq.

to provide for a presumptive election. The Office is considering the

impact of applying the ``unity of invention'' standard of the PCT,

rather than the ``independent and distinct'' standard of 35 U.S.C. 121,

in restriction practice. Nevertheless, this change to restriction

practice, without a corresponding change to other patent fees, would

have a negative impact on the Office's ability to obtain the necessary

operating funding.

Requiring Identification of Broadening in a Reissue Application (Topic

16)

The Office indicated in the Advance Notice that it was considering

a change to Sec. 1.173 to require reissue applicants to identify all

occurrences of broadening of the patent claims in a reissue

application. As proposed, reissue applicants would have to point out

all occurrences of broadening in the claims as an aid to examiners who

should consider issues involving broadening relative to the two-year

limit and the recapture doctrine.

While a few comments supported this proposed change, a large

majority of comments strongly opposed the concept. A number of those

commenting were wary of the consequences in court resulting from their

failure to identify all issues of broadening in a reissue application.

Several of the commenters expressed concerns that patent owners could

have their patent claims put at risk in litigation if they

unintentionally failed to identify all occurrences of broadening, which

they feared could be a basis for charging patentees with inequitable

conduct. Some were concerned about saddling applicants with yet another

burden which more properly should be left with the Office and the

examiner. Others felt that any unintentional omission of a broadening

identification could raise problems for the practitioner, which

problems are not offset by any increase in benefits derived by

presenting this information to the Office.

Response: This notice does not propose changing Sec. 1.173 to

require an identification of all occurrences of broadening in reissue

claims. In view of the comments received, the Office will continue to

rely on the examiner to identify any occurrences of broadening during

the examination of the reissue application, and not impose any

additional burden on the reissue applicants. The Office does not wish

to undo the benefits of the recently liberalized reissue oath/

declaration requirements by proposing additional rule changes which may

add burdens as well as possible unforeseen risks.

Creating Alternative Review Procedures for Applications Under Appeal

(Topic 18)

The Office indicated in the Advance Notice that it was considering

alternative review procedures to reduce the number of appeals forwarded

to the Board of Patent Appeals and Interferences. The Office was

specifically considering two alternative review procedures to reduce

the number of appeals having to be forwarded to the Board of Patent

Appeals and Interferences for decision. Both review procedures would

have involved a review that would be available upon request and payment

of a fee by the appellant, and would have involved review by at least

one other Office official. The first review would have occurred after

the filing of a notice of appeal but before the filing of an appeal

brief and have involved a review of all rejections of a single claim

being appealed to see whether any rejection plainly fails to establish

a prima facie case of unpatentability. The second review would have

occurred after the filing of an appeal brief and have involved a review

of all rejections on appeal.

The comments were split between supporting and opposing the appeal

review procedures under consideration. Most comments opposing the

appeal review procedures under consideration supported the concept of

screening the tenability of rejections in applications before they are

forwarded to the Board of Patent Appeals and Interferences, but argued

that: (1) The proposed appeal review amounts to quality control for

which the applicant should not be required to pay (appeal fees should

be raised if appropriate); (2) an appeal review is meaningless (only

advisory) unless the decision is binding on the examiner; (3) the Board

of Patent Appeals and Interferences may give undue deference to a

rejection that has been through an appeal review; and (4) the proposed

appeal review will delay ultimate review by the Board of Patent Appeals

and Interferences. Several comments indicated that the proposed change

would be acceptable, but included the following conditions with that

indication: (1) That the applicant need not pay for either review; (2)

that the reviewer be someone outside the normal chain of review for an

application being forwarded to the Board of Patent Appeals and

Interferences for decision; (3) that the reviewer be someone who has at

least full signatory authority; (4) that the report gives a detailed

explanation of the results of the appeal review (especially if a

position is changed/application allowed); (5) that fees (appeal or

appeal review) be refunded if the review results in the allowance of

the application; (6) that the pre-brief review involve review of the

application by more than one person; (7) that the pre-brief review also

determine whether any prima facie case of unpatentability has been

overcome; and (8) that the appeal process should be revised to model

the German Patent Office.

Response: This notice does not propose changing Sec. 1.191 et seq.

to provide for appeal reviews. The Office intends to increase the use

of the current appeal conference procedures as set forth in section

1208 of the Manual of Patent Examining Procedure (7th ed. 1998)(MPEP).

Reevaluating the Disclosure Document Program (Topic 20):

The Office indicated in the Advance Notice that it was reevaluating

the Disclosure Document Program (DDP) because this program has been the

subject of numerous abuses by so-called ``invention development

companies'' resulting in complaints from individual inventors, and

therefore may be detrimental to the interests of its customers. At the

same time, the distinctly different provisional applications provide a

viable alternate route whereby, for the basic small entity filing fee

of $75 (Sec. 1.16(k)), a provisional application may be filed by a

small entity. A provisional application does not require a claim in

compliance with 35 U.S.C. 112, para. 2, or an inventor's oath under 35

U.S.C. 115. Although abandoned after one year, provisional applications

are retained by the Office for at least twenty years, or longer if it

is referenced in a patent. A provisional application is considered a

constructive reduction to practice of an invention as of the filing

date accorded the provisional application if it describes the invention

in sufficient detail to enable a person of ordinary skill in the art to

make and use the invention and

[[Page 53777]]

discloses the best mode known by the inventor for carrying out the

invention. Unlike the DDP, a provisional application may be used under

the Paris Convention to establish a priority date for foreign filing.

In other words, except for adding the best mode requirement, the

disclosure requirements for a provisional application are identical to

the disclosure requirements for a Disclosure Document and a provisional

application provides users with a filing date without starting the

patent term period. Thus, almost any paper filed today as a proper

Disclosure Document can now be filed as a provisional application with

the necessary cover sheet.

For these reasons, the Office posed in the Advance Notice several

questions directed to whether the DDP served a useful function. Only

one comment presented evidence of a single instance where a disclosure

document was used in conjunction with an interference, but this person

was an extensive user of the DDP and cautioned that independent

inventors fail to keep records of the date of their invention. The same

commenter suggested that if the attorney signing the provisional

application could also claim small entity status for his client, this

would diminish the need for the DDP. This appears likely to be adopted

since, contemporaneously with this proposal, under Topic 1 (relating to

the simplification of the request for small entity status), it is being

proposed that applicant or applicant's attorney may assert entitlement

to small entity status. This proposal will make it easier for both

attorneys or applicants to assert small entity status when filing

provisional applications. See discussion of proposed changes to

Secs. 1.9, 1.27 and 1.28 relating to small entity status for further

details.

Six commenters felt that the program should be eliminated because

there is no value to applicants in light of the provisional application

procedure. Some felt that the program creates a dangerous situation in

that applicants may assume they are getting some type of patent

protection or that the statutory bar provision in 35 U.S.C. 102(b) has

been avoided. One commenter characterized the DDP as an ``unwitting

vehicle and accomplice for fraud and delusion of small inventors by so-

called ``invention development companies'', or self-delusions of

independent inventors, who have been mailing thousands of these

`Disclosure Documents' to the PTO * * *.'' Another commenter, however,

postulated that if the only difference between the DDP and provisional

applications was the cost, then the cancellation of the DDP would only

result in the abuse of the provisional patent applications at a higher

cost to unsuspecting inventors.

Four commenters confused the DDP with defensive publications as

their responses wrongfully indicated a belief that the DDP involved

publication of the disclosures. One commenter suggested that before the

program is eliminated that the Office should engage in an educational

program (with a survey) to explain the questionable value of the

program and alternative procedures available to the public. The

commenter further stated that the education program should focus on

those individuals who use the DDP and could include a survey of those

individuals to determine the benefit to the public. A second commenter

supported the concept of contacting the independent inventors. At least

one other comment suggested that elimination might be detrimental to

individual inventors.

Response: A review of the comments on this proposal reveals that

the independent inventor community submitted only a few of the

responses. The Office considers it inappropriate to proceed with this

proposal in the absence of greater input from the independent inventor

community. Therefore, this notice does not propose changes to the rules

of practice concerning the Disclosure Document Program. The Office will

continue to study the Disclosure Document Program and seek greater

input from the independent inventor community before any further action

is taken. In this regard, the matter will be referred to the Office of

Independent Inventor Programs, headed by Director Donald Grant Kelly.

The Office of Independent Inventor Programs was established on March

15, 1999. Reporting directly to the Commissioner, this new office was

established to provide assistance to independent inventors,

particularly in terms of improved communications, educational outreach,

and Office-based support. In addition, the Office of Independent

Inventor Programs will work to establish or strengthen cooperative

efforts with the Federal Trade Commission, the Department of Justice,

and various Bar Associations to address the growing problem of

invention development company marketing scams.

Creating a Patent and Trademark Office Review Service for Applicant-

Created Forms (Topic 21)

The Office indicated that it was considering establishing a new

service, under which the Office would (for a fee) review applicant-

created forms intended to be used for future correspondence to the

Office. After the review is completed, the Office would provide a

written report, including comments and suggestions (if any), but the

Office would not formally ``approve'' any form. If a (reviewed) form is

modified in view of a Office written report, comments and/or

suggestion, the revised form could be resubmitted to the Office for a

follow up review for an additional charge (roughly estimated at

approximately $50). After a form has been reviewed and revised, as may

be needed, to comply with the Office's written report, it would be

acceptable for the form to indicate if it is a substitute for an Office

form, and that it has been ``reviewed by the Patent and Trademark

Office.''

The Office received few comments on this proposal. Of those

comments received on this proposal, most supported this new service.

The comments included the following specific concerns and suggestions:

(1) That the form review service be optional and not mandatory; (2)

that there be one fee per form, regardless of the number of submissions

needed to have the form reviewed; (3) the service had little value

unless the Office would be willing to approve a form; and (4) the time

has come to require the use of mandatory forms.

Response: The Office indicated in the Advance Notice that this new

service would involve significant start-up costs, and, absent positive

feedback on the matter, the Office does not intend to implement this

new service. See Changes to Implement the Patent Business Goals, 63 FR

at 53530, 1215 Off. Gaz. Pat. Office at 117. In view of the limited

interest shown by the comments in this new service, the Office has

decided not to proceed with the proposal to provide a review service

for applicant-created forms.

Discussion of Specific Rules

Title 37 of the Code of Federal Regulations, Parts 1, 3, 5, and 10,

are proposed to be amended as follows:

Part 1

Section 1.4: Section 1.4(b) is proposed to be amended to refer to a

patent or trademark application, patent file, trademark registration

file, or other proceeding, rather than only an application file.

Section 1.4(b) is also proposed to be amended to provide that the

filing of duplicate copies of correspondence in a patent or trademark

application, patent file, trademark registration file, or other

proceeding should be avoided (except in situations in which the Office

requires the filing of duplicate copies), and that the Office

[[Page 53778]]

may dispose of duplicate copies of correspondence in a patent or

trademark application, patent file, trademark registration file, or

other proceeding. Finally, Sec. 1.4(b) and Sec. 1.4(c) are also

proposed to be amended to change ``should'' to ``must'' because the

Office needs separate copies of papers directed to two or more files,

or of papers dealing with different subjects.

Section 1.6: Section 1.6(d)(9) is proposed to be amended to delete

the reference to recorded answers under Sec. 1.684(c), as Sec. 1.684(c)

has been removed and reserved.

Section 1.9: Section 1.9(f) is proposed to be amended to provide

the definition of who can qualify to pay small entity fees, and

paragraphs (c) through (e) of Sec. 1.9 are proposed to be removed and

reserved.

Paragraph (f) of Sec. 1.9 is proposed to: (1) Be reformatted, (2)

define a ``person'' to include inventors and also noninventors holding

rights in the invention, (3) explain that qualification depends on

whether any rights in the invention were transferred and to whom, and

(4) provide that a license by a person to the Government under certain

situations does not bar entitlement to small entity status.

Section 1.9 paragraph (f) is proposed to be reformatted to place

the subject matter relating to definitions of small entities: (1)

Persons, (2) small business concerns; and (3) nonprofit organizations,

in one paragraph rather than as currently in paragraphs (c) through

(e). The expression ``independent inventor'' of current paragraph (c)

is proposed to be replaced with the term ``person'' in paragraph (f)(1)

(and other paragraphs of this section). The term ``person'' in

paragraph (f) is proposed to be defined to include individuals who are

inventors and also individuals who are not inventors but who have been

transferred some right or rights in the invention. This would clarify

that individuals who are not inventors but who have rights in the

invention are covered by the provisions of Secs. 1.9 and 1.27.

Paragraphs (f)(2)(i) and (f)(3)(i) of Sec. 1.9 are proposed to be

added to clarify that in order for small entity businesses and

nonprofit organizations to remain entitled to small entity status, they

must not in some manner transfer or be under an obligation to transfer

any rights in the invention to any party that would not qualify for

small entity status. Current Sec. 1.27 paragraphs (b), (f)(1)(iii), and

(f)(1)(iii) make clear that this rights transfer requirement applies to

all parties (independent inventors, small businesses and nonprofit

organizations, respectively). The absence of this requirement however,

from current Sec. 1.9 paragraphs (d) and (e) (small business and

nonprofit organization, respectively), notwithstanding its presence in

Sec. 1.9 paragraph (c) (independent inventor), has lead to confusion as

to the existence of such a requirement for small businesses and

nonprofit organizations. In view of the appearance of the rights

transfer requirement in Sec. 1.9, it is proposed to be removed from all

paragraphs of Sec. 1.27.

Paragraph (f)(4)(i) of Sec. 1.9 is proposed to be added to provide

a new exception relating to the granting of a license to the U.S.

Government by a person, that results from a particular rights

determination. Such a license would not bar entitlement to small entity

status. Similarly paragraph (f)(4)(ii) of Sec. 1.9 is proposed to be

added to have transferred to it (from current Sec. 1.27 paragraphs

(c)(2) and (d)(2)) the current exceptions relating to a licence to a

Federal agency by a small business or a nonprofit organization

resulting from a particular funding agreement. Again, such a license

would not bar entitlement to small entity status.

For additional proposed changes to small entity requirements see

Secs. 1.27 and 1.28.

Section 1.9(i) is proposed to be added to define ``national

security classified.'' Section 1.9(i), as proposed, defines ``national

security classified'' as used in 37 CFR Chapter 1 as meaning

``specifically authorized under criteria established by an Act of

Congress or Executive order to be kept secret in the interest of

national defense or foreign policy and, in fact, properly classified

pursuant to Act of Congress or Executive order.''

Section 1.12: Section 1.12(c)(1) is proposed to be amended to

change the reference to the fee set forth in ``Secs. 1.17(i)'' to the

fee set forth in ``Sec. 1.17(h).'' This change is for consistency with

the changes to Sec. 1.17(h) and Sec. 1.17(i). See discussion of changes

to Sec. 1.17(h) and Sec. 1.17(i).

Section 1.14: Section 1.14 is proposed to be amended to make it

easier to understand. Section 1.14 is also proposed to be amended to

provide that the Office will no longer give status information or

access in certain situations where applicants have an expectation of

confidentiality.

Section 1.14(a) is proposed to be amended to define ``status

information'' and ``access.'' ``Status information'' is proposed to be

defined as information that the application is pending, abandoned, or

patented, as well as the application numeric identifier. An

application's numeric identifier is (a) the application number, or (b)

the serial number and filing date, or date of entry into the national

stage. If an international application has not been assigned a U.S.

application number, no such application number can be provided by the

Office.

Section 1.14 as proposed would also eliminate the provisions making

available data on any continuing cases of an application identified in

a patent. (The provisions of current Sec. 1.14(a)(1)(ii) are proposed

to be deleted.)

Section 1.14(b) is proposed to be amended to state when status

information may be supplied, retaining the reasons set forth in current

Sec. 1.14(a)(1)(i). Section 1.14(b)(3) is proposed to be simplified so

as to indicate that status information will be given for international

applications in which the United States is designated, even if that

application has not yet entered the national stage.

Section 1.14(c) is proposed to be amended to contain the provisions

of current Sec. 1.14(a)(2).

The provisions of current Secs. 1.14(a)(3)(i), 1.14(a)(3)(iv)(C)

and 1.14(a)(3)(iv)(D) are proposed to be deleted, and the remaining

provisions of Sec. 1.14(a)(3) are proposed to be separated into

Sec. 1.14(d) and 1.14(e).

Section 1.14(d), as proposed, substantially corresponds to current

Sec. 1.14(a)(3)(iii) with additional text from current Sec. 1.14(e)(2).

Section 1.14(d), as proposed, states that an applicant, an attorney or

agent of record, or an applicant's assignee may have access to an

application by filing a power to inspect. In addition, Sec. 1.14(d), as

proposed, provides that if an executed oath or declaration has not been

filed, a registered attorney or agent named in the papers filed with

the application may have access, or authorize another person to have

access, to an application by filing a power to inspect. The form for a

power to inspect is PTO/SB/67.

Section 1.14(e), as proposed, substantially corresponds to current

Sec. 1.14(a)(3) and states that any person may obtain access to an

application by submitting a request for access if certain conditions

apply. Access to international phase application files is governed by

the provisions of the PCT and not by Sec. 1.14. The form for a request

for access to an abandoned application is PTO/SB/68. Section

1.14(e)(1), as proposed, corresponds to current Sec. 1.14(a)(3)(ii).

Section 1.14(e)(2)(i) corresponds to current Sec. 1.14(a)(3)(iv)(A).

Section 1.14(e)(2)(ii), as proposed, corresponds to current

Sec. 1.14(a)(3)(iv)(B).

[[Page 53779]]

Current Sec. 1.14 (b), (c), (d), (f), and (g) are proposed to be

redesignated Sec. 1.14 (f), (g), (h), (i) and (j), respectively.

Current Sec. 1.14(e) is proposed to be redesignated Sec. 1.14(k)

and to be amended to explain the requirements of a petition for access

and include the provisions of current Sec. 1.14(e)(1). Current

Sec. 1.14(e)(2) is proposed to be moved to proposed Sec. 1.14(d).

Section 1.14(k) is also proposed to indicate that the Office may

provide access or copies of an application if necessary to carry out an

Act of Congress or if warranted by other special circumstances. The

Office may, for example, provide access to, or copies of, applications

to another federal government agency, such as a law enforcement agency,

whether the Office is acting on its own initiative or in response to a

petition from the other agency when access is needed for a criminal

investigation. The Office may additionally provide access or copies

without requiring the other federal agency to file a petition including

a showing that access to the application is necessary to carry out an

Act of Congress or that special circumstances exist which warrant

petitioner being granted access to the application.

Section 1.17: Section 1.17(h) and Sec. 1.17(i) are proposed to be

amended to characterize the fee set forth in Sec. 1.17(h) as a petition

fee, and the fee set forth in Sec. 1.17(i) as a processing fee. Section

1.17(h) is proposed to be amended to list only those matters that

require the exercise of judgment or discretion in determining whether

the request/petition will be granted or denied (e.g., 1.47, 1.53,

1.182, 1.183, 1.313). Section 1.17(i) is proposed to be amended to list

those matters that do not require the exercise of judgment or

discretion, but which are routinely granted once the applicant has

complied with the stated requirements (e.g., 1.41, 1.48, 1.55). Thus,

the Office proposes to amend Sec. 1.17(h) and Sec. 1.17(i) to locate

matters requiring a petition in Sec. 1.17(h), and those matters that do

not require a petition, but only a processing fee, in Sec. 1.17(i).

Section 1.17(i) is also proposed to be amended to provide a processing

fee for: (1) Filing a nonprovisional application in a language other

than English (Sec. 1.52(d)), now in Sec. 1.17(k); and (2) filing an

oath or declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive

entity different from the inventive entity set forth in the

international stage (Sec. 1.497(d)).

Section 1.17(k) is proposed to be amended to provide a $200 fee for

processing an application containing color drawings or photographs.

Section 1.17 (l) and (m) are proposed to be amended for clarity and

to eliminate unassociated text.

Section 1.17(q) is proposed to be amended for consistency with

Sec. 1.17(h) and Sec. 1.17(i), as the matters listed therein apply to

provisional applications.

Section 1.17(t) is proposed to be added to provide a fee for filing

a request for expedited examination under Sec. 1.155(a).

Section 1.19: Section 1.19(a) is proposed to be amended to clarify

that the fees set forth in Sec. 1.19(a)(1) do not apply to patents

containing a color photograph or drawing, that the fee in

Sec. 1.19(a)(2) applies to plant patents in color, and that the fee in

Sec. 1.19(a)(3) applies to patents (other than plant patents)

containing a color drawing.

Section 1.19(b)(2) is proposed to be amended to provide a fee of

$250 for a certified or uncertified copy of a patent-related file

wrapper and contents of 400 or fewer pages, and an additional fee of

$25 for each additional 100 pages or portion thereof. Due to increases

in the number of pages in the contents of patent, patent application,

and patent-related interference files, the Office is adjusting the fee

specified in Sec. 1.19(b)(2) to recover its cost of providing copies of

these files. To better allocate costs, the Office is proposing to

charge a ``flat'' rate of $250 for a copy of a patent-related file

wrapper and contents of 400 or fewer pages (which includes most patent-

related files), but charge an additional fee of $25 for each additional

100 pages or portion thereof to make persons requesting copies of

patent-related files having contents containing a large number of pages

(e.g., interference proceedings) bear the cost of making copies of such

files. Since the Office cannot ascertain the exact number of pages of

the contents of a patent-related file, the Office expects to determine

the additional fee in proposed Sec. 1.19(b)(2)(ii) by estimating (e.g.,

by measuring file thickness) rather than actually counting pages.

Section 1.19(h) is proposed to be removed. The $25 fee under

Sec. 1.19(h) for obtaining a corrected or duplicate filing receipt is

no longer necessary as the Office is now performing that service

without charge. Consequently, where a filing receipt has an error in

it, applicants no longer need to provide a showing that the error was

due to Office mistake or pay a $25 fee for the corrected receipt. See

Changes In Practice In Supplying Certified Copies And Filing Receipts,

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

Section 1.22: Section 1.22(b) is proposed to be amended to change

``should'' to ``must'' because the Office needs fees to be submitted in

such a manner that it is clear for which purpose the fees are paid.

Section 1.22(b) is also proposed to be amended to provide that the

Office may return fees that are not itemized as required by

Sec. 1.22(b), and that the provisions of Sec. 1.5(a) do not apply to

the resubmission of fees returned pursuant to Sec. 1.22.

Section 1.22(c) is proposed to be added to define, based upon

current Office practice, when a fee is considered paid. Section

1.22(c)(1)(i) is proposed to provide that a fee paid by an

authorization to charge such fee to a deposit account containing

sufficient funds to cover the applicable fee amount (Sec. 1.25) is

considered paid on the date the paper for which the fee is payable is

received in the Office (Sec. 1.6), if the paper including the deposit

account charge authorization was filed prior to or concurrently with

such paper. Section 1.22(c)(1)(ii) is proposed to provide that a fee

paid by an authorization to charge such fee to a deposit account

containing sufficient funds to cover the applicable fee amount

(Sec. 1.25) is considered paid on the date the paper including the

deposit account charge authorization is received in the Office

(Sec. 1.6), if the deposit account charge authorization is filed after

the filing of the paper for which the fee is payable. The provision of

Sec. 1.22(c)(1)(ii) would apply, for example, in the following

situation: In reply to an Office action setting a three-month shortened

statutory period for reply, a paper is filed three and one-half months

after the mail date of the Office action without payment of the fee for

a one-month extension of time. Thereafter, the applicant discovers the

lack of payment and files a second paper including an authorization to

charge the appropriate fee for any extension of time required, but the

second paper is received in the Office (Sec. 1.6) four and one-half

months from the mail date of the Office action. The fee required for

the reply to the Office action to be timely is considered paid when the

second paper was received (Sec. 1.6) in the Office. Section

1.22(c)(1)(iii) is proposed to provide that a fee paid by an

authorization to charge such fee to a deposit account containing

sufficient funds to cover the applicable fee amount (Sec. 1.25) is

considered paid on the date of the agreement, if the deposit account

charge authorization is the result of an agreement between the

applicant and an Office employee as long as the agreement is reduced to

a writing. That is, the fee is considered paid on the date of the

agreement (e.g.,

[[Page 53780]]

the date of the interview), and the date the agreement is subsequently

reduced to writing (e.g., the mail date of the interview summary) is

not relevant to the date the fee is considered paid.

Section 1.22(c)(2) is proposed to provide that a fee paid other

than by an authorization to charge such fee to a deposit account is

considered paid on the date the applicable fee amount is received in

the Office (Sec. 1.6). Section 1.22(c)(3) is proposed to provide that

the applicable fee amount is determined by the fee in effect on the

date such fee is paid in full. When fees change (due to a CPI increase

under 35 U.S.C. 41(f) or other legislative change), the Office

generally accords fee payments the benefit of the provisions of

Sec. 1.8 vis-a-vis the applicable fee amount even though the fee is not

considered paid until it is received in the Office (Sec. 1.6). See

Revision of Patent Fees for Fiscal Year 1999, Final Rule Notice, 63 FR

67578, 67578-79 (December 8, 1998), 1217 Off. Gaz. Pat. Office 148, 148

(December 29, 1998). This treatment of fee payments is an ``exception''

to the provisions of Sec. 1.22(c) as proposed, in that such fee would

be not be entitled to any benefit under Sec. 1.8 vis-a-vis the

applicable fee amount but for the express exception provided in the fee

change rulemaking. Of course, a fee is considered timely if the fee is

submitted to the Office under the procedure set forth in Sec. 1.8(a)

(unless excluded under Sec. 1.8(a)(2)), even though the fee is not

considered paid until it is actually received in the Office (Sec. 1.6).

Section 1.25: Section 1.25(b) is proposed to be amended to provide

that an authorization to charge fees under Sec. 1.16 in an application

submitted under Sec. 1.494 or Sec. 1.495 will be treated as an

authorization to charge fees under Sec. 1.492. There are many instances

in which papers filed for the purpose of entering the national stage

under 35 U.S.C. 371 and Sec. 1.494 or Sec. 1.495 include an

authorization to charge fees under Sec. 1.16 (rather than fees under

Sec. 1.492). In such instances, the Office treats the authorization as

an authorization to charge fees under Sec. 1.492 since: (1) Timely

payment of the appropriate national fee under Sec. 1.492 is necessary

to avoid abandonment of the application as to the United States; and

(2) the basic filing fee under Sec. 1.16 is not applicable to such

papers or applications. Therefore, the Office is proposing to change

Sec. 1.25(b) to place persons filing papers to enter the national stage

under 35 U.S.C. 371 and Sec. 1.494 or Sec. 1.495 on notice as to how an

authorization to charge fees under Sec. 1.16 will be treated.

Section 1.25(b) is also proposed to be amended to provide that an

authorization to charge fees set forth in Sec. 1.18 to a deposit

account is subject to the provisions of Sec. 1.311(b).

Section 1.26: The Office is proposing to amend the rules of

practice to provide that all requests for refund must be filed within

specified time periods. The rules of practice do not (other than in the

situation in which a request for refund is based upon subsequent

entitlement to small entity status) set any time period (other than ``a

reasonable time'') within which a request for refund must be filed. In

the absence of such a time period, Office fee record keeping systems

and business planning must account for the possibility that a request

for refund may be filed at any time, including many years after payment

of the fee at issue.

It is a severe burden on the Office to treat a request for refund

filed years after payment of the fee at issue. Since Office fee record

keeping systems change over time, the Office must check any system on

which fees for the application, patent or trademark registration have

been posted to determine what fees were in fact paid. In addition,

changes in fee amounts, which usually occur on October 1 of each year,

make it difficult to determine with certainty whether a fee paid years

ago was the correct fee at the time and under the condition it was

paid.

It also causes business planning problems to account for the

possibility that a request for refund may be filed years after payment

of the fee at issue. Without any set time period within which a request

for refund must be filed, the Office must maintain fee records, in any

automated fee record keeping system ever used by the Office, in

perpetuity. Finally, as the Office can never be absolutely certain that

a submitted fee was not paid by mistake or in excess of that required,

the absence of such a time period subjects the Office to unending and

uncertain financial obligations.

Accordingly, the Office is proposing to amend Sec. 1.26 to provide

non-extendable time periods within which any request for refund must be

filed to be timely.

Section 1.26(a) is proposed to be amended by dividing its first

sentence into two sentences. Section 1.26(a) is further amended for

consistency with 35 U.S.C. 42(d) (``[t]he Commissioner may refund a fee

paid by mistake or any amount paid in excess of that required''). Under

35 U.S.C. 42(d), the Office may refund: (1) a fee paid when no fee is

required (a fee paid by mistake); or (2) any fee paid in excess of the

amount of fee that is required. See Ex parte Grady, 59 USPQ 276, 277

(Comm'r Pats. 1943) (the statutory authorization for the refund of fees

under the ``by mistake'' clause is applicable only to a mistake

relating to the fee payment). In the situation in which an applicant or

patentee takes an action ``by mistake'' (e.g., files an application or

maintains a patent in force ``by mistake''), the submission of fees

required to take that action (e.g., a filing fee submitted with such

application or a maintenance fee submitted for such patent) is not a

``fee paid by mistake'' within the meaning of 35 U.S.C. 42(d). Section

1.26(a) is also proposed to be amended to revise the ``change of

purpose'' provisions to read ``[a] change of purpose after the payment

of a fee, as when a party desires to withdraw a patent or trademark

filing for which the fee was paid, including an application, an appeal,

or a request for an oral hearing, will not entitle a party to a refund

of such fee.''

Section 1.26(a) is also proposed to be amended to change the

sentence ``[a]mounts of twenty-five dollars or less will not be

returned unless specifically requested within a reasonable time, nor

will the payer be notified of such amount; amounts over twenty-five

dollars may be returned by check or, if requested, by credit to a

deposit account'' to ``[t]he Office will not refund amounts of twenty-

five dollars or less unless a refund is specifically requested, and

will not notify the payor of such amounts.'' Except as discussed below,

the Office intends to continue to review submitted fees to determine

that they have not been paid by mistake or in excess of that required,

and to sua sponte refund fees (of amounts over twenty-five dollars)

determined to have been paid by mistake or in excess of that required.

Section 1.26(a), however, is proposed to be amended to eliminate

language that appears to obligate the Office to sua sponte refund fees

to be consistent with the provisions of Sec. 1.26(b) which requires

that any request for refund be filed within a specified time period.

Section 1.26(a) is also proposed to be amended to facilitate

refunds by electronic funds transfer. Section 31001(x) of the Omnibus

Consolidated Rescissions and Appropriations Act of 1996, Pub. L. 104-

134, 110 Stat. 1321 (1996) (the Debt Collection Improvement Act of

1996), amended 31 U.S.C. 3332 to require that all disbursements by

Federal agencies (subject to certain exceptions and waivers) be made by

electronic funds transfer. The Department of the

[[Page 53781]]

Treasury has implemented this legislation at 31 CFR Part 208. See

Management of Federal Agency Disbursements, Final Rule Notice, 63 FR

51489 (September 25, 1998). Thus, Sec. 1.26(a) is proposed to be

amended to enable the Office to obtain the banking information

necessary for making refunds by electronic funds transfer in accordance

with 31 U.S.C. 3332 and 31 CFR Part 208.

Specifically, Sec. 1.26(a) is also proposed to be amended such that

if a party paying a fee or requesting a refund does not instruct that

refunds be credited to a deposit account, the Office will attempt to

make any refund by electronic funds transfer. If such party does not

provide the banking information necessary for making refunds by

electronic funds transfer, the Commissioner may either require such

banking information or use the banking information on the payment

instrument to make a refund. This provision will authorize the Office

to: (1) Use the banking information on the payment instrument (e.g., a

personal check is submitted to pay the fee) when making a refund due to

an excess payment; or (2) require such banking information in other

situations (e.g., a refund is requested or a money order or certified

bank check is submitted containing an excess payment). The purpose of

this proposed change to Sec. 1.26(a) is to encourage parties to submit

the banking information necessary for making refunds by electronic

funds transfer (if not on the payment instrument) up-front, and not to

add a step (requiring such banking information) to the refund process.

If it is not cost-effective to require the banking information

necessary for making refunds by electronic funds transfer, the Office

may simply issue any refund by treasury check. See 31 CFR 208.4(f).

Section 1.26(b) is proposed to be added to provide that any request

for refund must be filed within two years from the date the fee was

paid, except as otherwise provided in Sec. 1.26(b) or in Sec. 1.28(a).

See the discussion of proposed Sec. 1.22(c) concerning the date a fee

is considered paid.

Section 1.26(b) is also proposed to provide that if the Office

charges a deposit account by an amount other than an amount

specifically indicated in an authorization (Sec. 1.25(b)), any request

for refund based upon such charge must be filed within two years from

the date of the deposit account statement indicating such charge, and

that such request must be accompanied by a copy of that deposit account

statement. This provision of Sec. 1.26(b) would apply, for example, in

the following types of situations: (1) A deposit account is charged for

an extension of time as a result of there being a prior general

authorization in the application (Sec. 1.136(a)(3)); or (2) a deposit

account is charged for the outstanding balance of a fee as a result of

an insufficient fee being submitted with an authorization to charge the

deposit account for any additional fees that are due. In these

situations, the party providing the authorization is not in a position

to know the exact amount by which the deposit account will be charged

until the date of the deposit account statement indicating the amount

of the charge.

Finally, Sec. 1.26(b) is proposed to provide that the time periods

set forth in Sec. 1.26(b) are not extendable.

Section 1.27: The Office is considering simplifying applicant's

request for small entity status under Sec. 1.27. The currently used

small entity statement forms are proposed to be eliminated as they

would no longer be needed. Some material in Sec. 1.28 is proposed to be

reorganized into Sec. 1.27.

Small entity status would be established at any time by a simple

assertion of entitlement to small entity status. The currently required

statements, which include a formalistic reference to Sec. 1.9, would no

longer be required. Payment of an exact small entity basic filing or

national fee would also be considered an assertion of small entity

status. This would be so even if the wrong exact basic filing or

national fee was selected. To establish small entity status after

payment of the basic filing fee as a non-small entity, a written

assertion of small entity status would be required to be submitted. The

parties who could assert small entity status would be liberalized to

include one of several inventors or a partial assignee.

Other clarifying changes are proposed to be made including a

transfer of material into Sec. 1.27 from Sec. 1.28 drawn towards: (1)

Assertions in related, continuing and reissue applications; (2)

notification of loss of entitlement to small entity status; and (3)

fraud on the Office in regard to establishing small entity status or

paying small entity fees.

While there would be no change in the current requirement to make

an investigation in order to determine entitlement to small entity

status, a recitation would be added noting the need for a determination

of entitlement prior to an assertion of status; the Office would only

be changing the ease with which small entity status could be claimed

once it has been determined that a claim to such status is appropriate.

For additional proposed changes to small entity requirements see

Secs. 1.9 and 1.28.

Problem and Background

Section 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

Sec. 1.9. Either a reference to Sec. 1.9 or a specific statement

relating to the provisions of Sec. 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

(current Sec. 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 latest, at the time of paying, any small entity fee. In

part, to ensure that at least the reference to Sec. 1.9 is complied

with, the Office 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 Sec. 1.9

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

an application has not been assigned and there are multiple inventors,

each inventor must actually sign a small entity statement, the

execution of which must all be coordinated and submitted at the same

time. Similarly, coordination of execution and submission of statements

is needed where there is more than one assignee. 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 all required small entity

statements. See current Sec. 1.28(a)(1). The current two-month refund

window under Sec. 1.28 is not extendable.

The rigid requirements of Secs. 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

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

They believe that all

[[Page 53782]]

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 Sec. 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 office 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 Office 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 office 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

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

obtained if a statement under Sec. 1.27 and the request for a refund of

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 Office 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 Office (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 in fees and resources and the office

could issue the patent with fewer resources (Patent Business Goals 4

and 5).

Assertion as to Entitlement to Small Entity Status; Assertion by

Writing

The Office is proposing to allow small entity status to be

established by the submission of a simple written assertion of

entitlement to small entity status. The current formal requirements of

Sec. 1.27, which include a reference to either Sec. 1.9, or to the

exclusive rights in the invention, would be eliminated.

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

particular form. Written assertions of small entity status or

references to small entity fees would 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 on an application transmittal letter

or reply cover sheet. It is the intent of the Office to modify its

application transmittal forms to provide for such a check box.

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

Sec. 1.27 and which are now used to establish small entity status.

Assertion by Payment of Small Entity Basic Filing or National Fee

The payment of an exact small entity basic filing or national fee

will also be considered to be a sufficient assertion of entitlement to

small entity status. An applicant filing a patent application and

paying an exact small entity basic filing or national fee would

automatically establish small entity status for the application even

without any further written assertion of small entity status. This is

so even if an applicant were to inadvertently select the wrong type of

small entity basic filing or national fee for the application being

filed. If small entity status was not established when the basic filing

fee was paid, such as by payment of a large entity basic filing or

national fee, a later claim to small entity status would require a

written assertion. Payment of a small entity fee other than a small

entity basic filing or national fee (e.g., extension of time, or issue

fee) without inclusion of a written assertion would not be sufficient.

Even though applicants can assert small entity status by payment of

an exact small entity basic filing or national fee, the Office strongly

encourages applicants to file a written assertion of small entity

status. A written assertion would guarantee the applicant that the

application will have small entity status even if applicant fails to

pay the exact small entity basic filing or national fee. The limited

provision providing for small entity status by payment of an exact

small entity basic filing or national fee is only intended to act as a

safety net to avoid possible financial loss to inventors or small

businesses that can qualify for small entity status.

Caution: Even though small entity status would be accorded where

the wrong type of small entity basic filing fee or national fee were

selected but the exact amount of the fee were paid, applicant would

still need to pay the correct small entity amount for the basic filing

or national fee where selection of the wrong type of fee results in a

deficiency. While an accompanying general authorization to charge any

additional fees would suffice to pay the balance due of the proper

small entity basic filing or national fee, specific authorizations to

charge fees under Sec. 1.17 or extension of time fees would not

suffice to pay any balance due of the proper small entity basic filing

or national fee because they do not actually authorize payment of small

entity amounts.

Examples: Applications under 35 U.S.C. 111: If an applicant were to

file a utility application under 35 U.S.C. 111 yet only pay the exact

small entity amount for a design application (currently the small

entity filing fees for utility and design applications are $380 and

$155, respectively), small entity status for the utility application

would be accorded. See the following examples:

(1) Where the utility application was filed inadvertently with

the exact small entity basic filing fee for a design application

rather than for a utility application and an authorization to charge

the filing fee was not present, the Office would accord small entity

status and mail a Notice to File Missing Parts of Application,

requiring the $225 difference between the small entity utility

application filing fee owed and the small entity design application

filing fee actually paid plus a small entity surcharge (of $65) for

the late submission of the correct filing fee.

(2) Where the utility application was filed without any filing

fee but the $155 exact small entity filing fee for a design

application was inadvertently paid in response to a Notice to File

Missing Parts of Application, small entity status would be

established even though the correct small entity filing fee for a

utility application was not fully paid. While the Office will notify

applicant of the

[[Page 53783]]

remaining amount due, the period for reply to pay the correct small

entity utility basic filing fee would, however, continue to run.

Small entity extensions of time under Sec. 1.136(a) would be needed

for the later submission of the $225 difference between the $380

small entity utility basic filing fee owed and the $155 small entity

design filing fee inadvertently paid. If there was an authorization

to charge a deposit account in the response to the Notice, the $225

difference would have been charged along with the small entity $65

surcharge and the period for response to the Notice to File Missing

Parts of Application would not continue to run.

Applications entering that national stage under 35 U.S.C. 371:

Section 1.492(a) sets forth five (5) different basic national fee

amounts which apply to different situations. If an applicant pays a

basic national fee which is the exact small entity amount for one of

the fees set forth in Sec. 1.492(a), but not the particular fee which

applies to that application, the applicant will be considered to have

made an assertion of small entity status. This is true whether the fee

paid is higher or lower than the actual fee required. See the following

examples.

(1) An applicant pays $485 (the small entity amount due under

Sec. 1.492(a)(3), where the United States was neither the

International Searching Authority (ISA) nor the International

Preliminary Examining Authority (IPEA) and the search report was not

prepared by the European Patent Office (EPO) or Japanese Patent

Office (JPO)) when in fact the required small entity fee is $420

under Sec. 1.492(a)(5), because the JPO or EPO prepared the search

report. The applicant will be considered to have made the assertion

of small entity status. The office will apply $420 to the payment of

the basic national fee and refund the overpayment of $65.

(2) An applicant pays $420 (the small entity fee due under

Sec. 1.492(a)(5) where the search report was prepared by the EPO or

JPO). In fact, the search report was prepared by the Australian

Patent Office and no preliminary examination fee was paid to the

Patent and Trademark Office. Thus, the required small entity fee is

$485 under Sec. 1.492(a)(3). The applicant will be considered to

have made the assertion of small entity status. If the applicant has

authorized payment of fee deficiencies to a deposit account, the

Office will charge the $65 to the deposit account and apply it and

the $420 to the basic national fee. If there is no authorization or

there are insufficient fees in the deposit account, the basic

national fee payment is insufficient. If the balance is not provided

before 20 or 30 months from the priority date has expired, the

application is abandoned.

If payment is attempted to be made of the proper type of basic

filing or national fee, but it is not the exact small entity fee

required (an incorrect fee amount is supplied) and a written assertion

of small entity status is not present, small entity status would not be

accorded. The Office would mail a notice of insufficient basic filing

or national fee with a surcharge due as in current practice if an

authorization to charge the basic filing or national fee were not

present. The Office would not consider a basic filing or national fee

submitted in an amount above the correct fee amount, but below the non-

small entity fee amount, as a request to establish small entity status

unless an additional written assertion is also present. Of course, the

submission of a basic filing or national fee below the correct fee

amount 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 basic

filing or national fees) and there is no indication (assertion) of

entitlement to small entity status present, that authorization would

not be sufficient to establish small entity status unless the

authorization was specifically directed to small entity basic filing or

national fees. The general authorization to charge fees would continue

to be acted upon immediately and the full (not small entity) basic

filing or national fees would be charged with applicant having three

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.

Parties Who Could Assert Entitlement to Small Entity Status by Writing

The parties who could submit a written assertion of entitlement to

small entity status would be any party permitted by Office regulations,

Sec. 1.33(b), to file a paper in an 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, the three inventors upon filing the application could

submit a written assertion of entitlement to small entity status 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. In addition, a written assertion of entitlement to

small entity status would be able to be made by one of several

inventors or a partial assignee. Current practice does not require an

assignee asserting small entity status to submit a Sec. 3.73(b)

certification, and such certifications would not be required under the

proposed revision either for partial assignees or for an assignee of

the entire right, title, and interest.

Parties who Could Assert Entitlement to Small Entity Status by Payment

of Basic Filing or National Fee

Where small entity status is sought by way of payment of the basic

filing or national fee, any party may submit payment, such as by check,

and small entity status would be accorded.

Inventors Asserting Small Entity Status

Any inventor would be permitted to submit a written assertion of

small entity status, including inventors who are not officially named

of record until an executed oath/declaration is submitted. See

Sec. 1.41(a)(1). Where an application is filed without an executed

oath/declaration pursuant to Sec. 1.53(f), the Office will accept the

written assertion of an individual who has merely been identified as an

inventor on filing of the application (e.g., application transmittal

letter) as opposed to being named as an inventor. Sections 1.4(d)(2)

and 10.18(b) are seen as sufficient basis to permit any individual to

provide a written assertion so long as the individual identifies

himself or herself as an inventor. Where a Sec. 1.63 oath or

declaration is later filed, any original written assertion as to small

entity status will remain unless changed by an appropriate party under

Sec. 1.27(f)(2). Where a later filed Sec. 1.63 oath or declaration sets

forth an inventive entity that does not include the person who

initially was identified as an inventor and who asserted small entity

status, small entity status will also remain. Where small entity status

is asserted by payment of the small entity basic filing, or national

fee any party may submit such fee, including an inventor who was not

identified in the application transmittal letter, or a third party.

Caution: The fact that certain parties can execute a written

assertion of entitlement to small entity status, such as one of several

inventors, or a partial assignee, does not entitle that written

assertion to be entered in the Official file record and become an

effective paper unless the person submitting the paper is authorized to

do so under Sec. 1.33(b). In other words, the fact that one of several

inventors can sign a written assertion of entitlement to small entity

status does not also imply that the same inventor can submit the paper

to the Office and have it entered of record.

[[Page 53784]]

The written assertion, even though effective once entered in the

Official file record, must still be submitted by a party entitled to

file a paper under Sec. 1.33(b). Payment of the small entity basic

filing or national stage fee would not be subject to such submission

requirement and any payment thereof would be accepted and treated as an

effective assertion of small entity status.

Policy Considerations

Office 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 application simply by payment of the small entity basic filing

fee if the prior

application/patent had small entity status. See current

Sec. 1.28(a)(2). The instant concept of payment of the small entity

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 who are not actually entitled

to small entity status requesting 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 created by the

requirements of Sec. 1.27 than the requirements help to prevent status

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

Continued Obligations for Thorough Investigation of Small Entity Status

Applicants should not confuse the fact that the Office is making it

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

complete and thorough investigation before an assertion is made 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 or national fee to establish small entity status, the single

inventor asserting entitlement to small entity status would need to

check with the other two inventors to determine whether small entity

status was appropriate.

The intent of Sec. 1.27 is that the person making the assertion of

entitlement to 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 Office 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. Section 1.27(g)

would recite current provisions in Sec. 1.28(d)(1) and (2) relating to

fraud practiced on the Office.

Consistent with Sec. 1.4(d)(2), the payment of a small entity basic

filing or national fee, would constitute a certification under

Sec. 10.18(b). Thus, a simple payment of the small entity basic filing

or national fee, without a specific written assertion, will activate

the provisions of Sec. 1.4(d)(2) and, by that, invoke the self-

certification requirement set forth in Sec. 10.18(b), regardless of

whether the party is a practitioner or non-practitioner.

Clarification of Need for Investigation

Section 1.27 is proposed to be clarified (paragraph (e)) by

explicitly providing that a determination ``should'' be made of

entitlement to small entity status according to the requirement set

forth in Sec. 1.9 prior to asserting small entity status. The need for

such a determination of entitlement to small entity status prior to

assertion of small entity status is set forth in terms of that there

``should'' be such a determination, rather than there ``must'' be such

a determination. In view of the ease with which small entity status

would now be obtainable, it is deemed advisable to provide an explicit

direction that a determination of entitlement to small entity status

pursuant to Sec. 1.9 be made before its assertion. Consideration was

given to making the need for a determination a requirement rather than

advisory; however, the decision was made to make it advisory,

particularly in view of the following possible scenario: One of three

inventors submits a written assertion of entitlement to small entity

status without making any determination of entitlement to such status,

such as by checking with the other two inventors to see if they have

assigned any rights in the invention. Small entity status was proper at

the time asserted notwithstanding the lack of a proper determination.

If the determination is set forth as a requirement (``must''), the lack

of such a determination might act to cause an unduly harsh result where

small entity status was in fact appropriate and the failure to check

prior to assertion was innocent. It is recognized that the use of

``should'' may cause concern that a cavalier approach to asserting

entitlement to small entity status may be taken by encouraging some who

are asserting status not to make a complete determination as the

determination is not set forth as being mandatory. On balance, it is

thought that the use of ``should'' would lead to more equitable

results. The danger of encouraging the assertion of small entity status

without a prior determination as to qualification for small entity

status is thought to be small, because, should status turn out to be

improper, the lack of a prior determination may result in a failure to

meet the lack of deceptive intent requirements under Sec. 1.27(g) or

Sec. 1.28(c). The Office has noted that any attempt to improperly

establish status as a small entity will be viewed as a serious matter.

See MPEP 509.03.

Removal of Status

Section 1.27 is also proposed to be clarified (paragraph (f)(2))

that once small entity status is established in an application, any

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

written assertion to that extent, rather than only payment of a large

entity fee, similar to current practice. For example, when paying the

issue fee in an application that has previously been accorded small

entity status and the required new determination of continued

entitlement to small entity status reveals that status has been lost,

applicant should not just simply pay the large issue fee or cross out

the recitation of small entity status on the returned copy of the

notice of allowance (PTOL-85(b)), but submit a separate paper

requesting removal of small entity status pursuant to proposed

Sec. 1.27(f)(2).

Correction of any inadvertent and incorrect establishment of small

entity status would be by way of a paper under proposed Sec. 1.28(c) as

in current practice.

Response to Comments

Many comments supported the proposal without qualification. Only

two, however, explicitly mentioned the payment option for obtaining

small entity status with one recognizing that any error is now easier

to correct under Sec. 1.28(c). Others would eliminate the possibility

of obtaining small entity

[[Page 53785]]

status based on payment of the exact small entity basic filing (or

national fee) due to possible error in paying an unintended small

entity basic filing (or national fee) and being accorded an unwanted

small entity status. There was only one total opposition to the

proposal as a ``bad'' idea.

Comment: Several comments supported the proposal as a positive

change that is both helpful to applicants and attorneys and one that

will reduce the cost of establishing small entity status, particularly

where there are multiple forms required due to joint ownership or

licensing of multiple rights. It was noted that the proposal eliminates

the time-consuming requirement for obtaining a signature of a person,

such as an officer of the company, who may not have been involved in

the application drafting process. It was also stated that the need to

withhold the filing fee on filing an original application would be

eliminated where the current small entity statement cannot be signed in

time.

Response: The comments were adopted. The proposal from the Advance

Notice is being carried forward in the instant notice. The particular

parties who may assert entitlement to small entity status is being

further liberalized over the Advance Notice to include only one of the

inventors or a partial assignee.

Comment: One individual opposed the proposal because the submission

of a paper is the only effective way an attorney can be certain that a

client is complying with the requirements for small entity status.

Eliminating the form removes the incentive of the client to provide the

attorney with needed information, particularly with respect to foreign

clients.

Response: A copy of Secs. 1.9 and 1.27 can be supplied to a client

as easily as the form and should be just as effective with foreign

clients. It is not seen that the requirement of signing the form would

be a more certain means that compliance exists than if the client would

have to state to the attorney, either orally or in a letter, that the

client complies with the requirements for asserting entitlement to

small entity status. The form itself does not provide the underlying

factual basis for entitlement to small entity status. It merely recites

the requirement of Sec. 1.9 and that the party executing it seeks small

entity status. The attorney is not now required to confirm that a

client is in compliance once the form is signed by the client and would

not be required to make such confirmation under the proposal. It would

continue to be up to the client to determine whether it wishes to

assume whatever risk there may be should it decide to do the small

entity determination by itself rather than rely on the attorney for

aid.

Comment: A few comments would eliminate the option of asserting

small entity status by payment of the basic filing (or national fee)

due to possible errors in fee payments thereby obtaining unwanted small

entity status. One comment recognized that the Office's adoption in the

last rulemaking of a straightforward approach to correction under

Sec. 1.28(c) would make correction of improper status for good faith

errors a simple procedure.

Response: The comment seeking elimination of the payment option is

not adopted. The comment noting the previous easing of correction for

good faith errors so that the possibility of inadvertent errors should

not be a bar to the payment option is adopted. It is expected that this

would occur very infrequently if at all in that the exact small entity

amount must be submitted. Only errors in amounts paid where the error

was the exact small entity amount for the basic filing (or national

fee) would trigger small entity status. In view of the continued need

for an affirmative determination of entitlement to small entity status

to be made, the error would mostly occur by a misreading of a fee

chart. Such type of error if it inadvertently leads to the

establishment of small entity status would be easily correctable by the

current Sec. 1.28(c).

Comment: Some comments sought to ensure that the written assertion

would be easy to make by adding a check box to provide for an assertion

on: Office forms, the Sec. 1.63 declaration, on the application, or on

the transmittal sheet.

Response: The comments are adopted to the extent that this is an

implementation issue to be addressed when a final rule is issued. The

Office intends at this time to at least supply a check box on its

application transmittal forms.

Paragraph by Paragraph Analysis

Section 1.27 is proposed to be amended in its title to recognize a

new means of establishing small entity status by replacing

``statement'' with ``assertion,'' to indicate that an assertion of

small entity status would permit the payment of small entity fees, and

to reflect transfer of subject matter from Sec. 1.28 relating to

determination of entitlement to and notification of loss of entitlement

to small entity status, and fraud on the Office.

Paragraphs (a) through (d) of Sec. 1.27 is proposed to be

reformatted and amended to recite ``assertion'' as a new means for

establishing small entity status to replace ``statement'', and new

paragraphs (e), (f)(1) and (f)(2), and (g) are proposed to be added.

Paragraph (b) of Sec. 1.27 is proposed to be reformatted to add

paragraphs (b)(1) through (b)(4) of Sec. 1.27. Paragraph (b) (1) of

Sec. 1.27 would permit assertion of small entity status by a writing

that is clearly identifiable as present ((b)(1)(i)), signed

((b)(1)(ii)), and convey the concept of small entity status without the

need for specific words but with a clear indication of an intent to

assert entitlement to small entity status ((b)(1)(iii)). Paragraph

(b)(2) of Sec. 1.27 would make submission of a written assertion to

obtain small entity status easier in view of increased categories of

parties who could submit such a paper. The parties who could sign the

written assertion are identified as: one of the parties who can

currently submit a paper under Sec. 1.33(b) ((b)(2)(i) of Sec. 1.27),

at least one of the inventors ((b)(2)(ii) of Sec. 1.27) rather than all

the inventors (applicants) as required by Sec. 1.33(b)(4) for other

types of papers, or a partial assignee ((b)(2)(iii) of Sec. 1.27)

rather than all the partial assignees and any applicant retaining an

interest as required by Sec. 1.33(b)(3) for other types of papers. A

Sec. 3.73(b) certification would not be required for an assignee under

either paragraphs (b)(2)(i) or (iii). Paragraph (b)(3) of Sec. 1.27

would permit the payment, by any party, of an exact amount of one of

the small entity basic filing or national fees set forth in

Sec. 1.16(a), (f), (g), (h), or (k), or Sec. 1.492(a)(1) through (a)(5)

to be treated as a written assertion of entitlement to small entity

status even where an incorrect type of basic filing or national fee is

inadvertently selected in error. Paragraph (b)(3)(i) would provide that

where small entity status was accorded based on the payment of a wrong

type of small entity basic filing or national fee, the correct small

entity amount would still be owed. Paragraph (b)(3)(ii) would provide

that payment of a small entity fee in its exact amount for a fee other

than what is provided for in paragraph (b)(3) would not be sufficient

to establish small entity status absent a concomitant written assertion

of entitlement to small entity status. After a basic filing or national

fee is paid as a large entity, a refund under Sec. 1.28(a) of the large

entity portion can only be obtained by establishing small entity status

by a written assertion and not by paying a second basic filing or

national fee in a small entity amount. Payment of a large entity basic

filing or national fee precludes paying a second basic

[[Page 53786]]

filing or national fee in a small entity amount to establish small

entity status. Paragraph (b)(4) of Sec. 1.27 recites material

transferred from current Sec. 1.28(a)(2).

Paragraph (c) of Sec. 1.27 is proposed to be amended to provide

that fees other than the basic filing and national fees can only be

paid in small entity amounts if submitted with or subsequent to a

written assertion of entitlement to small entity status. The paragraph

would clarify that an exception exists under Sec. 1.28(a) for refunds

of the large entity portion of a fee within three months of payment

thereof if the refund request is accompanied by a written assertion of

entitlement to small entity status.

Paragraph (d)(1) of Sec. 1.27 is proposed to be amended to

reference Sec. 1.28(b) as the means of changing small entity status. It

would be clarified that where rights in an invention are assigned, or

there is an obligation to assign, to a small entity subsequent to an

assertion of entitlement to small entity status, a second assertion is

not required. Paragraph (d)(2) would clarify that once small entity

status is withdrawn a new written assertion would be required to again

obtain small entity status.

Paragraph (e) of Sec. 1.27 is proposed to be added to clarify the

need to do a determination of entitlement to small entity status prior

to asserting small entity status, and that the Office generally does

not question assertions of entitlement to small entity status.

Paragraph (f)(1) of Sec. 1.27 is proposed to be added to contain

material transferred from current Sec. 1.28. Paragraph (f)(2) is

proposed to be added to revise the current reference to the party who

can sign a notification of loss of entitlement to small entity status

to require a party identified in Sec. 1.33(b).

Paragraph (g) of Sec. 1.27 is proposed to be added to contain

material transferred from paragraphs (d)(1) and (d)(2) of current

Sec. 1.28 relating to fraud attempted or committed on the Office in

regard to paying small entity fees.

Section 1.28: Section 1.28 is proposed to be amended to be entirely

reformatted with some material transferred to Sec. 1.27.

Section 1.28(a) is proposed to be amended to allow a three-month

period (presently a two-month period) for refunds based on later

establishment of small entity status. See further discussion in

Sec. 1.28(b)(1).

Section 1.28(b)(1) is proposed to be amended to refer to

Sec. 1.22(c). Section 1.22(c) sets forth that the filing date for an

authorization to charge fees starts the period for refunds under

Sec. 1.28(a). The current time period for a refund request is two

months from payment of the full fee and the date of payment for refund

purposes can vary depending on the means the applicant used to pay the

required fee. For example, if the applicant paid the required fee by

check, the date of payment is the date on which the fee paper,

including the check, was filed in the Office. If the applicant

authorized a charge to a deposit account, however, the date of payment

is the date the Office debited the deposit account. In view of the

proposed change in practice under Secs. 1.22(c) and 1.28(b)(1) to

accord the same date of payment for checks and authorizations to charge

deposit accounts, the refund period would be extended to three months

in order to in-part offset any shortening of the refund time period

that may result in starting the time period from the filing date of the

fee paper instead of the debit date for an authorization to charge a

deposit account. Additionally, in view of changes in practice under

Sec. 1.27 to ease the claiming of small entity status, the need for

refunds should diminish, and the different payment date of an

authorization to charge a deposit account for small entity refund

purposes should not cause much inconvenience to applicants.

Section 1.28(b)(2) is proposed to be amended to state that the

deficiency amount owed under Sec. 1.28(c) is calculated by using the

date on which the deficiency was paid in full.

Section 1.28(c) is proposed to be amended to require that

deficiency payments must be submitted separately for each file

(Sec. 1.28(c)(1)) and must include the itemization of the deficiency

payment by identifying: type of fee along with the current fee amount

(Sec. 1.28(c)(2)(ii)(A)), the small entity amount paid and when

(Sec. 1.28 (c)(2)((ii)(B)), the deficiency owed for each individual fee

paid in error (Sec. 1.28(c)(2)(ii)(C)), the total deficiency payment

owed (Sec. 1.28(c)(2)(ii)(D)), and that any failure to comply with the

separate payment and itemization requirements would allow the Office at

its option to charge a processing fee or set a non-extendable one month

period for compliance to avoid return of the paper (Sec. 1.28(c)(3)).

Paragraph by Paragraph Analysis

The title of Sec. 1.28 is proposed to be revised to focus on

refunds and on how errors in status are excused in view of transfer of

material to Sec. 1.27.

Paragraphs (a)-(c) of Sec. 1.28 are proposed to be reformatted.

Paragraph (a)(1) of Sec. 1.28 is proposed to be amended as

paragraph (a).

Paragraph (a) of Sec. 1.28 is proposed to be amended to clarify

that the period for a refund runs from payment of the ``full fee,'' and

that it is the payment of the full fee that is considered the

significant event relative to establishing status for a particular fee.

Additionally, paragraph (a) would amend the time period for requesting

a refund based upon later establishment of small entity status. The

proposed time period would be three months measured from the filing

date of the fee paper.

Paragraph (a)(2) of Sec. 1.28 is proposed to be amended to have

some subject matter transferred to Sec. 1.27(b)(4). The next to last

sentence, relating to filing a continuing or reissue application and

referencing a small entity statement in the prior application or

patent, would be deleted as unnecessary. The currently required

reference to status in the prior application or patent would be

replaced by the equally easily written assertion of Sec. 1.27(b)(1).

Written references to small entity status in a prior application,

including submission of a copy of the small entity statement in a prior

application, submitted in a continuing application subsequent to the

effective date of any final rule, would be liberally construed under

the proposed Sec. 1.27(b)(1)(iii). Similarly, the last sentence of

current paragraph (a)(2) would be deleted as the payment option for

establishing small entity status in continuing or reissue applications

has been expanded in Sec. 1.27(b)(3) to include all applications.

Caution: Although the Office intends to liberally construe what is

deemed to be an assertion of small entity status, the concept of

entitlement must be clearly conveyed.

Example: A prior application has been accorded small entity

status. A continued prosecution application (CPA) under Sec. 1.53(d)

is filed with a general authorization to charge fees that does not

state that the fees to be charged are small entity fees. Even though

the CPA contains the same application number as its prior

application (and the small entity statement), it would not be

accorded small entity status and large entity filing fees would be

immediately charged. This would be so because a new determination of

entitlement to small entity status must be made upon filing of a new

application, such as a CPA. Accordingly, in filing the CPA there

must be some affirmative act to indicate that the determination has

been done anew and small entity status is still appropriate. Where a

copy of the small entity statement from the prior application, or a

written assertion in the CPA application transmittal letter, or an

authorization to charge small entity fees were present, the result

would be reversed and small entity status would be accorded the CPA

application on filing.

Paragraph (a)(3) of Sec. 1.28 is proposed to be amended to have its

subject matter transferred to Sec. 1.27(d)(1).

[[Page 53787]]

Paragraph (b) of Sec. 1.28 is proposed to be amended to have its

subject matter transferred to Sec. 1.27(f)(1) and (2). New paragraphs

(b)(1) and (b)(2) are proposed to be added. Paragraph (b)(1) of

Sec. 1.28 would refer to Sec. 1.22(c) to define the date a fee is paid

for the purpose of starting the three-month period for refund. Current

practice for authorizations to charge deposit accounts is to give

benefit of the date that the deposit account is actually debited by the

Office, which is a later time than when the paper authorizing charge of

the fee to a deposit account is filed with the Office. Current practice

would therefore be changed so that it is the date the paper is filed,

not the date of debit of the fee, that would start the three-month

refund period. Paragraph (b)(2) of Sec. 1.28 would refer to

Sec. 1.22(c) to define the date when a deficiency payment is paid in

full, which is the date that determines the amount of deficiency that

is due.

Example: A small entity issue fee has been paid in error in

January and a paper under Sec. 1.28(c) was submitted the following

June with the deficiency payment. The deficiency payment of the

issue fee was incorrectly determined so that the full amount owed

(for the issue fee) was not submitted in June. If the mistake in the

June payment is not discovered until the following November, the

extra amount owed must be recalculated to take into account any

October 1 increase in the issue fee.

Paragraph (c) of Sec. 1.28 is proposed to be amended to recite that

separate submissions, including separate payments and itemizations, are

required for any deficiency payment. Paragraph (c)(1) would require

that a deficiency paper/submission be limited to one application or

patent file. Where, for example, the same set of facts has caused

errors in payment in more than one application and/or patent file, a

separate paper would need to be submitted in each file for which an

error is to be excused. Paragraph (c)(2) would now require that for

each fee that was erroneously paid in error the following itemization

be provided: The particular fee (e.g., basic filing fee, extension of

time fee) (paragraph (c)(2)(ii)((A)), the small entity fee amount

actually paid and when (for example, distinguishing between two one-

month extension of time fees erroneously paid on two different dates)

(paragraph (c)(2)(ii)(B)), the actual deficiency owed for each fee

previously paid in error (paragraph (c)(2)(ii)(C)), and the total

deficiency owed that is the sum of the individual deficiencies owed

(paragraph (c)(2)(ii)(D)). Paragraph (c)(3) would address the failure

to comply with the separate submission, including separate payment and

itemization requirements of paragraph (c)(1) and (2) of this section.

Paragraph (c)(3), upon failure to comply, would permit the Office at

its option either to charge a processing fee (Sec. 1.17(i) would be

suitably amended) to process the paper or require compliance within a

one-month non-extendable time period to avoid return of the paper.

Paragraphs (d) (1) and (2) of Sec. 1.28, are proposed to be amended

to have the material relating to fraud attempted or committed on the

Office as to paying of small entity fees, transferred to Sec. 1.27(g).

New paragraph (d) of Sec. 1.28 is proposed to be added to clarify that

any paper submitted under paragraph (c) of Sec. 1.28 would also be

treated as a notification of loss of small entity status under

paragraph (f)(2) of Sec. 1.27.

Section 1.33: Paragraph (a) of Sec. 1.33 would be reformatted to

create additional paragraphs (a)(1) and (a)(2) to separately identify

the parties who can change a correspondence address depending upon the

presence or absence of a Sec. 1.63 oath/declaration. The revision is

intended to make clear what may be a confusing practice to applicants

as to which parties can set forth or change a correspondence address

when an application does not yet have a Sec. 1.63 oath or declaration

by any of the inventors. See Sec. 1.14(d)(4) for a similar change

regarding status and access information. References to a Sec. 1.63

oath/declaration are intended to mean an executed oath/declaration by

any inventor, but not necessarily all the inventors.

Paragraph (a) of Sec. 1.33 is proposed to be amended to provide

that in a patent application the applicant must, either in an

application data sheet (Sec. 1.76) or in a clearly identifiable manner

elsewhere in any papers submitted with an application filing, specify a

correspondence address to which the Office will send notices, letters

and other communications in or about the application. It is now stated

that where more than one correspondence address is specified, the

Office would determine which one to establish as the correspondence

address. This is intended to cover the situation where an unexecuted

application is submitted with conflicting correspondence addresses in

the application transmittal letter and in an unexecuted oath/

declaration, or other similar situations.

Paragraph (a) of Sec. 1.33 would request the submission of a

daytime telephone number of the party to whom correspondence is to be

addressed. While business is to be conducted on the written record,

Sec. 1.2, a daytime telephone number would be useful in initiating

contact that could later be reduced to a writing. The phone number

would be changeable by any party who could change the correspondence

address.

Paragraph (a)(1) of Sec. 1.33 would provide that any party filing

the application and setting forth a correspondence address could later

change the correspondence address provided that a Sec. 1.63 oath/

declaration by any of the inventors has not been submitted. The parties

who may so change the correspondence address would include only the one

inventor filing the application even if more than one inventor was

identified on the application transmittal letter. If two of three

inventors filed the application, the two inventors filing the

application would be needed to change the correspondence address.

Additionally, any registered practitioner named in the application

transmittal letter, or a person who has the authority to act on behalf

of the party that will be the assignee (if the application was filed by

the party that will be the assignee), could change the correspondence

address. A registered practitioner named in a letterhead would not be

sufficient, but rather a clear identification of the individual as

being a representative would be required. The intent is to permit a

company (to whom the invention has been assigned, or to whom there is

an obligation to assign the invention) who files an application, to

designate the correspondence address, and to change the correspondence

address, until such time as a (first) Sec. 1.63 oath/declaration is

filed. The mere filing of a Sec. 1.63 oath/declaration, that does not

include a correspondence address, including when the company is only a

potential partial assignee would not affect any correspondence address

previously established on filing of the application, or changed per

paragraph (a)(1) of this section. The expression ``party that will be

the assignee'' rather than assignee is used in that until a declaration

is submitted, inventors have only been identified and any attempted

assignment, or partial assignment, cannot operate for Office purposes

until the declaration is supplied. Hence, the mere identification of a

party as a party that will be an assignee or assignee would be

sufficient for it to change the correspondence address without resort

to Sec. 3.73(b).

Paragraph (a)(2) of Sec. 1.33 would retain the current requirements

for changing a correspondence address when a Sec. 1.63 oath/declaration

by any of the inventors has been filed. Where a correspondence address

was set forth or changed pursuant to paragraph (a)(1) (prior to the

[[Page 53788]]

filing of a Sec. 1.63 oath or declaration), that correspondence address

remains in effect upon filing of a Sec. 1.63 declaration and can then

only be changed pursuant to paragraph (a)(2).

Paragraph (b) of Sec. 1.33 would be simplified to make it easier to

understand who are appropriate parties to file papers, particularly in

view of the proposed change under Sec. 3.71(b).

Paragraph (b)(3) of Sec. 1.33 is proposed to be amended to add a

reference to Sec. 3.71.

Section 1.41: Section 1.41(a)(1) is proposed to be amended to

indicate that a paper including the processing fee set forth in

Sec. 1.17(i) is required for supplying or changing the name(s) of the

inventor(s) where an oath or declaration prescribed in Sec. 1.63 is not

filed during pendency of a nonprovisional application, rather than a

petition including a petition fee, for consistency with the proposed

amendment to Sec. 1.17(i). Section 1.41(a)(2) is proposed to be amended

to indicate that a paper including the processing fee set forth in

Sec. 1.17(q) is required for supplying or changing the name(s) of the

inventor(s) where a cover sheet prescribed by Sec. 1.53(c)(1) is not

filed during the pendency of a provisional application, rather than a

petition including a petition fee, for consistency with the proposed

amendment to Sec. 1.17(q). Section 1.41(a)(3) is proposed to be amended

to delete the language concerning an alphanumeric identifier, and to

provide that the name, residence, and citizenship of each person

believed to be an actual inventor should be provided when the

application papers pursuant to Sec. 1.53(b) are filed without an oath

or declaration or application papers pursuant to Sec. 1.53(c) are filed

without a cover sheet. Section 1.41(a)(4) is proposed to be added to

set forth that the inventors who submitted an application under

Sec. 1.494 or Sec. 1.495 are the inventors in the international

application designating the United States.

Section 1.44: Section 1.44 is proposed to be removed and reserved

to eliminate the requirement that proof of the power or authority of

the legal representative be recorded in the Office or filed in an

application under Secs. 1.42 or 1.43.

Section 1.47: Section 1.47 is proposed to be amended to refer to

``the fee set forth in Sec. 1.17(h)'' for consistency with the proposed

amendment to Sec. 1.17(h) and (i). See discussion of the proposed

amendment to Sec. 1.17. Section 1.47 is also proposed to be amended to

add a new paragraph (c) providing that the Office will send notice of

the filing of the application to all inventors who have not joined in

the application at the address(es) provided in the petition under

Sec. 1.47, and will publish notice of the filing of the application in

the Official Gazette. This provision is currently included in each of

Sec. 1.47(a) and Sec. 1.47(b). Section 1.47(c) is also proposed to

provide that the Office may dispense with such notice provisions in a

continuation or divisional application where notice regarding the

filing of the prior application has already been sent to the nonsigning

inventor(s). The patent statute gives the Office great latitude as to

the notice that must be given to an inventor who has not joined in an

application for patent. See 35 U.S.C. 116, para.2 (``after such notice

to the omitted inventor as [the Commissioner] prescribes''), and 118

(upon such notice to [the inventor] as the Commissioner deems

sufficient''). Providing notice to a non-joined inventor in a

continuation or divisional application places a significant burden on

the Office, especially when such continuation or divisional application

is filed using a copy of the oath or declaration from a prior

application under Sec. 1.63(d). In addition, providing additional

notice to the non-joined inventor in the continuation or divisional

application provides little (if any) actual benefit to the non-joined

inventor, as identical notice was previously given during the

processing of the prior application. Thus, the Office considers it

appropriate to dispense with notice under Sec. 1.47 in situations

(continuations or divisionals of an application accorded status under

Sec. 1.47) in which the non-joined inventor was previously given such

notice in a prior application.

Section 1.48: Section 1.48 is proposed to be amended to have the

title revised to reference the statutory basis for the rule, 35 U.S.C.

116.

Section 1.48 paragraphs (a) through (c) are proposed to be amended

to: delete the recitation of ``other than a reissue application'' as

such words are unnecessary in view of the indication in the title of

the section that the section does not apply to reissue applications and

the revision to paragraph (a) (discussed below), to change ``When'' to

``If,'' and to add ``nonprovisional'' before ``application'' where it

does not already appear.

Sections 1.48 paragraphs (a)(1) through (e)(1) would be revised to

replace the reference to a ``petition'' with a reference to a

``request.'' What is meant to be encompassed by the term ``petition,''

as it is currently used in the section, may be better defined by the

term ``request.'' The presence of ``petition'' currently in the section

is misleading to the extent that it may indicate to applicants that

papers under this section have to be filed with the Office of Petitions

when in fact amendments to correct the inventorship under Sec. 1.48 are

to be decided by the primary examiners in the Technology Centers and

should be submitted there. See MPEP 1002.02(e). The requirements for a

statement currently in Sec. 1.48 paragraphs (a)(1), (c)(1), and (e)(1)

would be placed in Sec. 1.48 paragraphs (a)(2), (c)(2), and (e)(2) and

corresponding changes made in subsequent paragraphs.

Section 1.48 paragraphs (b) and (d) are proposed to be revised to

indicate that a request to correct the inventorship thereunder must be

signed by a party as set forth in Sec. 1.33(b) (which would enable a

practitioner alone to sign all the needed papers). The inventors,

whether being added, deleted or retained, are not required to

participate in a correction under these paragraphs. Thus, the

inventor(s) to be deleted pursuant to paragraph (b) in a nonprovisional

application, or added pursuant to paragraph (d) in a provisional

application, and those inventors that are retained in either situation,

are not required to participate in the inventorship correction, such as

by signing a statement of facts, or a new oath or declaration under

Sec. 1.63.

Section 1.48 paragraphs (a) through (e) are proposed to be revised

to define the fee required as a ``processing'' fee, to delete the

reference to a ``petition,'' and to indicate that amendment of the

application to correct the inventorship would require the filing of a

request to correct the inventorship along with other items, as set

forth in the respective paragraphs of this section. The latter change

is not one of substance but a clarification that the amendment

requirement of the statute, 35 U.S.C. 116, merely refers to the change

in Office records (face of the application file wrapper corrected,

notation on a previously submitted Sec. 1.63 oath/declaration, change

in Patent Application Location and Monitoring (PALM) data, and a

corrected filing receipt issued) that would be made upon the grant of a

Sec. 1.48 request. Thus, amendment of the inventorship in an

application is not made as an amendment under Sec. 1.121. Where there

is a need to make an actual Sec. 1.121(a)(1) amendment, such as when a

cover page of the specification recites the inventive entity, that

should also be submitted. In the absence of such an amendment, the

Office may, at its option, correct the inventor's names on the cover

sheet or in the specification. Where an application needs correction of

inventorship under Sec. 1.48 and a paper is

[[Page 53789]]

submitted with a title that does not set forth the paper as a request

under Sec. 1.48, but it is clear from the papers submitted that an

inventorship correction is desired, a request for a correction of

inventorship under Sec. 1.48 will be inferred from the papers submitted

and will be treated under Sec. 1.48.

A request for a corrected filing receipt correcting a typing or

office error in the names of the inventors will not ordinarily be

treated under Sec. 1.48. Any request to correct inventorship should be

presented as a separate paper. For example, placing a request under

Sec. 1.48(b) to correct the inventorship in the remarks section of an

amendment may cause the Office to overlook the request and not act on

it.

Paragraph (f)(1) of Sec. 1.48 is proposed to be clarified to recite

that its provision for changing the inventorship only applies if an

oath or declaration under Sec. 1.63 has not been submitted by any of

the inventors, and that submission of an oath or declaration under

Sec. 1.63 by any of the inventors is sufficient to correct an earlier

identification of the inventorship.

Example 1: An unexecuted application is filed identifying A, B,

and C as the inventors. A Sec. 1.63 declaration is also submitted

signed only by A and naming A, B, and C as the inventors. To

complete the application (Sec. 1.53(f)) a Sec. 1.63 oath or

declaration by B and C is needed. In attempting to reply to a Notice

to File Missing Parts of Application requiring the missing oath or

declaration by B and C it is discovered that D is also an inventor.

A declaration by A, B, C, and D if submitted without a petition

under Sec. 1.48(a) to correct the inventorship to A-D from A-C will

not be accepted as a reply to the Notice to File Missing Parts of

Application.

Thus, it should be clear that a first oath or declaration under

Sec. 1.63 completed by less than all the inventors initially

identified, when the oath or declaration is submitted when the

application is filed (or after), will under Sec. 1.48(f)(1) lock in the

inventorship, and the later filing of another declaration by a

different but complete inventive entity will not be effective under

Sec. 1.48(f)(1) to correct the inventorship.

Example 2: An application is filed identifying A, B, and C as

the inventors in the application transmittal letter, and a Sec. 1.63

declaration is concomitantly submitted only by A naming only A as

the sole inventor. The inventorship of the application is A (because

of the declaration of A). A later submitted Sec. 1.63 declaration by

A, B, and C would require a petition under Sec. 1.48(a) to correct

the inventorship to A, B, and C before the declaration by A, B, and

C could be accepted.

Paragraph (f)(1) of Sec. 1.48 is proposed to be amended to

reference Sec. 1.497(d) for submission of an executed oath or

declaration naming an inventive entity different from the inventive

entity set forth in the international stage when entering the national

stage under 35 U.S.C. 371 and Secs. 1.494 or 1.495.

Section 1.48(h) is proposed to be added to indicate that the

provisions of this section do not apply to reissue applications, and

referencing Secs. 1.171 and 1.175 for correction of inventorship in

reissue applications.

Section 1.48(i) is proposed to be added to reference Secs. 1.324

and 1.634 for corrections of inventorship in patents and interference

proceedings, respectively.

Section 1.48 paragraphs (a) through (i) are proposed to have titles

added to make locating the appropriate paragraph easier.

Section 1.51: Section 1.51(b) is proposed to be amended to include

a reference to Sec. 1.53(d), as a proper continued prosecution

application under Sec. 1.53(d) in which the basic filing fee has been

paid is a complete application under Sec. 1.51(b).

Section 1.52: Section 1.52(a) and (b) are proposed to be amended to

clarify the paper standard requirements for papers submitted as part of

the record of a patent application. Section 1.52(a) sets forth the

paper standard requirements for all papers which are to become a part

of the permanent records of the Office, and Sec. 1.52(b) sets forth the

paper standard requirements for the application (specification,

including the claims, drawings, and oath or declaration) and any

amendments or corrections to the application. Papers making up the

application or an amendment or correction to the application must meet

the requirements of Sec. 1.52 (a) and (b), but papers submitted for the

record that do not make up the application (e.g., a declaration under

Sec. 1.132) need not meet the requirements of Sec. 1.52(b).

The Office is proposing in Sec. 1.52(b)(6) an optional procedure

for numbering the paragraphs of the specification, but not including

the claims or the abstract. Although not required to do so, applicants

would be strongly encouraged to present, at the time of filing, each

paragraph of the specification as individually and consecutively

numbered. The presentation of numbered paragraphs at the time of filing

would facilitate the entry of amendments (in compliance with proposed

Sec. 1.121) during the prosecution of the application. If the

paragraphs of the specification are not numbered at the time of filing,

applicants would be urged, when the first response to an Office action

is submitted, to supply a substitute specification including numbered

paragraphs, consistent with the requirement of Sec. 1.121 for amending

the specification. Thereafter, amendments would be made through the use

of numbered paragraph replacement.

The proposal to include paragraph numbering is to provide a

consistent and uniform basis for the amendment practice being proposed

in Sec. 1.121 and as an aid to transitioning into total electronic

filing. The proposed rule language establishes a procedure for

numbering the paragraphs of the specification at the time of filing.

This procedure would facilitate the entry of amendments by providing a

uniform method for identifying paragraphs in the specification, thus

overcoming any differences created by word processor formatting and

pagination variations. Concurrently proposed changes to Sec. 1.121 for

amendment practice would additionally require the submission of clean

copies of numbered replacement paragraphs, which would eliminate much

of the red ink associated with hand entry of amendments and expedite

the Optical Character Recognition (OCR) scanning and reading employed

in the patent printing process, ultimately resulting in patents

containing fewer errors.

The Office will neither number the paragraphs or sections of the

specification, nor accept any instructions from applicants to do the

same.

The proposed procedure for paragraph numbering, in the interest of

uniformity, encourages applicants to use four digit Arabic numerals

enclosed within square brackets and including leading zeroes as the

first element of the paragraph. The numbers and brackets should be

highlighted in bold (e.g., [0001], [0002]), and should appear as the

first part of the paragraph immediately to the right of the left

margin. Approximately four character spaces should follow the bracketed

number before the beginning of the actual text of the paragraph.

Paragraph (or section) headers, such as ``Description of the

Invention'' or ``Example 3,'' are not considered part of any paragraph

and should not be numbered. Nontext elements, such as tables,

mathematical formulae, etc., are considered part of the paragraph

around or above the element, and should not be numbered separately. All

portions of any nontext elements should be kept from extending to the

left margin.

Response to Comments: Although paragraph numbering (as it appears

in proposed Sec. 1.52) was not an independent topic in the Advance

Notice, the proposal did appear in conjunction with the replacement

[[Page 53790]]

paragraph concept as part of Topic 13. While there was some opposition

to paragraph numbering in the comments received relative to Topic 13 as

being burdensome and inconsistent with the requirements of other

countries, the Office proposes to move forward with this concept as the

most effective plan currently under consideration for identifying

paragraphs of the specification. The JPO and EPO have already begun to

use paragraph numbering in their application and publication

processing.

Some of the comments received in response to Topic 13 suggested

identification of paragraphs by page and line number. Inasmuch as the

Office proposal must be consistent with future electronic requirements,

this suggestion of identification by page and line number could not be

adopted in that fixed pages do not exist in documents created on a

computer. Page and line numbering are affected by font size, line

spacing and formatting and can vary between different hardware and

software components. Once each paragraph has been individually

identified and tagged with a number, however, all future processing of

the application, whether by paper or electronic version, may be done

uniformly and accurately by both the Office and the applicant.

Section 1.52(b)(7) is proposed to be added to provide that if

papers submitted as part of the application do not comply with

Sec. 1.52 (b)(1) through (b)(5), the Office may require the applicant

to provide substitute papers that comply with Sec. 1.52(b)(1) through

(b)(5), or the Office may convert the papers submitted by applicant

into papers that do comply with Sec. 1.52(b)(1) through (b)(5) and

charge the applicant for the costs incurred by the Office in doing so

(Sec. 1.21(j)).

Section 1.52(c) is proposed to be amended to provide that: (1)

Alterations to the application papers must (rather than ``should'') be

made before the oath or declaration is signed; (2) a substitute

specification (Sec. 1.125) is required if the application papers do not

comply with Sec. 1.52(a) and (b) due to interlineations, erasures,

cancellations or other alterations of the application papers; and (3)

if an oath or declaration is a copy of the oath or declaration from a

prior application, the application for which such copy is submitted may

contain alterations that do not introduce matter that would have been

new matter in the prior application.

Section 1.52(d) is proposed to be amended to provide separately for

nonprovisional applications and provisional applications filed in a

language other than English. Section 1.52(d)(1) is proposed to be added

to provide that: (1) If a nonprovisional application is filed in a

language other than English, an English language translation of the

non-English-language application, a statement that the translation is

accurate, and the processing fee set forth in Sec. 1.17(i) are

required; and (2) if these items are not filed with the application,

applicant will be notified and given a period of time within which they

must be filed in order to avoid abandonment. Section 1.52(d)(2) is

proposed to be added to provide that: (1) If a provisional application

is filed in a language other than English, an English language

translation of the non-English-language provisional application will

not be required in the provisional application; but (2) if a

nonprovisional application claims the benefit of such provisional

application, an English-language translation of the non-English-

language provisional application and a statement that the translation

is accurate must be supplied if the nonprovisional application is

involved in an interference (Sec. 1.630), or when specifically required

by the examiner.

Section 1.53: Section 1.53(c)(1) is proposed to be amended to

clearly provide that the cover sheet required by Sec. 1.51(c)(1) may be

an application data sheet (Sec. 1.76).

Section 1.53(c)(2) is proposed to be amended for clarity and to

refer to ``the processing fee set forth in Sec. 1.17(q)'' for

consistency with the proposed amendment to Sec. 1.17(q).

Section 1.53(d)(4) is proposed to be amended to eliminate the

reference to a petition under Sec. 1.48 for consistency with the

proposed amendment to Sec. 1.48. Section 1.53(d) is also proposed to be

amended to add a new Sec. 1.53(d)(10) to provide a reference to

Sec. 1.103(b) for requesting a limited suspension of action in a

continued prosecution application (CPA) under Sec. 1.53(d).

Section 1.53(e)(2) is proposed to be amended to require that a

petition under Sec. 1.53(e) be accompanied by the fee set forth in

Sec. 1.17(h), regardless of whether the application is filed under

Sec. 1.53(b), Sec. 1.53(c), or Sec. 1.53(d). While provisional

applications filed under Sec. 1.53(c) are not subject to examination

under 35 U.S.C. 131 (35 U.S.C. 111(b)(8)), petitions under Sec. 1.53(e)

in provisional applications under Sec. 1.53(c) are as burdensome as

petitions under Sec. 1.53(e) in nonprovisional applications under

Sec. 1.53(b) or Sec. 1.53(d). Therefore, it is appropriate to charge

the petition fee set forth in Sec. 1.17(h) for petitions under

Sec. 1.53(e) in applications filed under Sec. 1.53(b), Sec. 1.53(c), or

Sec. 1.53(d).

Section 1.53(f) and (g) are proposed to be amended for clarity and

to include a reference to ``or reissue'' in the paragraph heading to

clarify that the provisions of Sec. 1.53(f) apply to all nonprovisional

applications, which include continuation, divisional, and continuation-

in-part applications, as well as reissue applications and continued

prosecution applications. Section 1.53(f) is also proposed to be

amended to provide that if applicant does not pay one of either the

basic filing fee or the processing and retention fee set forth in

Sec. 1.21(l) during the pendency of the application (rather than within

one year of the mailing of a Notice to File Missing Parts of

Application), the Office may dispose of the application.

Section 1.55: Section 1.55(a) is proposed to be amended to refer to

``the processing fee set forth in Sec. 1.17(i)'' for consistency with

the proposed amendment to Sec. 1.17(h) and (i). See discussion of the

proposed amendment to Sec. 1.17.

Section 1.55(a)(2)(i) through (iii) is proposed to clarify the

current Office practice concerning when the claim for priority and the

certified copy of the foreign application specified in 35 U.S.C. 119(b)

must be filed. Specifically Sec. 1.55(a)(2)(i) clarifies current Office

practice that in an application filed under 35 U.S.C. 111(a) that the

Office requires the claim for priority and the certified copy of the

foreign application be filed before a patent is granted. Section

1.55(a)(2)(ii) clarifies current Office practice that in an application

that entered the national stage of an international application after

compliance with 35 U.S.C. 371, the time limits set in the PCT and the

Regulations under the PCT control the time limit for making the claim

for priority, while the certified copy of the foreign application must

be filed before the patent is granted if the certified copy was not

filed in accordance with the PCT and the Regulation under the PCT.

Section 1.55(a)(2)(iii) clarifies current Office practice that the

Office may require both the claim for priority and certified copy of

the foreign application be filed at an earlier time than in

Secs. 1.55(a)(2)(i) or 1.55(a)(2)(ii) under certain circumstances.

Section 1.55(a)(2)(iv) is also proposed to provide that priority

claims and documents may be submitted after payment of the issue fee

but with no further review by the Office other than placement in the

application file. Changes to the patent printing process will

dramatically reduce the period between the date of issue fee payment

and the date a patent is issued. See

[[Page 53791]]

Filing of Continuing Applications, Amendments, or Petitions after

Payment of Issue Fee, Notice, 1221 Off. Gaz. Pat. Office 14 (April 6,

1999); and Patents to Issue More Quickly After Issue Fee Payment,

Notice, 1220 Off. Gaz. Pat. Office 42 (March 9, 1999). Thus, it is now

difficult for the Office to match a petition containing a priority

claim or certified priority document filed after payment of the issue

fee with an application file, and determine whether the applicant has

met the conditions of 35 U.S.C. 119(a)-(d) to make the priority claim,

before the date the application will issue as a patent. Nevertheless,

it is also undesirable to prohibit applicants from filing a priority

claim or certified priority document between the date the issue fee is

paid and the date a patent is issued. Therefore, the Office will permit

applicants to file a priority claim or certified priority document

(with the processing fee set forth in Sec. 1.17(i)) between the date

the issue fee is paid and the date a patent is issued. The Office will,

however, merely place such submission in the application file but will

not attempt to determine whether the applicant has met the conditions

of 35 U.S.C. 119(a)-(d) to make the priority claim nor include the

priority claim information in the text of the patent. In such a

situation (as is currently the situation when a petition under

Sec. 1.55 is granted), the patent will not contain the priority claim

information, and the patentee may request a certificate of correction

under 35 U.S.C. 255 and Sec. 1.323 at which point a determination of

entitlement for such priority will be made.

Section 1.56: Section 1.56 is proposed to be amended to add a new

Sec. 1.56(e) to provide that in any continuation-in-part application,

the duty under Sec. 1.56 includes the duty to disclose to the Office

all information known to the person to be material to patentability

which became available between the filing date of the prior application

and the national or PCT international filing date of the continuation-

in-part application. Section 1.63(e) currently requires that the oath

or declaration in a continuation-in-part application acknowledge that

the duty under Sec. 1.56 includes the duty to disclose to the Office

all information known to the person to be material to patentability (as

defined in Sec. 1.56(b)) which became available between the filing date

of the prior application and the national or PCT international filing

date of the continuation-in-part application. Thus, the examiner must

object to an oath or declaration in a continuation-in-part that does

not contain this statement. By amending Sec. 1.56 to expressly provide

that the duty under Sec. 1.56 includes this duty, an acknowledgment of

the duty of disclosure under Sec. 1.56 is an acknowledgment of this

duty in a continuation-in-part application, and an express statement to

that effect in the oath or declaration will no longer be required.

Section 1.59: Section 1.59 is proposed to be amended to refer ``the

fee set forth in Sec. 1.17(h)'' for consistency with the proposed

amendment to Sec. 1.17(h) and (i). See discussion of the proposed

amendment to Sec. 1.17.

Section 1.63: Section 1.63 is proposed to be amended for clarity

and simplicity. Section 1.63(a) is proposed to be amended to set forth

the oath or declaration requirements that are requirements of 35 U.S.C.

115 (and thus cannot be waived by the Office pursuant to Sec. 1.183).

Specifically, Sec. 1.63(a) is proposed to be amended to provide that an

oath or declaration filed under Sec. 1.51(b)(2) as a part of a

nonprovisional application must: (1) Be executed (i.e., signed) in

accordance with either Sec. 1.66 or Sec. 1.68; (2) identify each

inventor and country of citizenship of each inventor; and (3) state

that the person making the oath or declaration believes the named

inventor or inventors to be the original and first inventor or

inventors of the subject matter which is claimed and for which a patent

is sought.

Section 1.63(b) is proposed to be amended to provide that in

addition to meeting the requirements of Sec. 1.63(a), the oath or

declaration must also: (1) Identify the application to which it is

directed; (2) state that the person making the oath or declaration has

reviewed and understands the contents of the application, including the

claims, as amended by any amendment specifically referred to in the

oath or declaration; and (3) state that the person making the oath or

declaration acknowledges the duty to disclose to the Office all

information known to the person to be material to patentability as

defined in Sec. 1.56. These requirements are currently located at

Sec. 1.63(a)(2), (b)(1), and (b)(3).

Section 1.63(c) is proposed to provide that an applicant may

provide identifying information either in an application data sheet

(Sec. 1.76) or in the oath or declaration. Permitting applicants to

provide such identifying information in an application data sheet

(rather than in the oath or declaration) should result in: (1) An

increase in the use of application data sheets; and (2) a decrease in

the need for supplemental oaths or declarations (providing omitted

information) for applications in which an application data sheet was

submitted.

Section 1.63(e) is proposed to be amended to eliminate the

requirement that an oath or declaration in a continuation-in-part

application state that the person making the oath or declaration also

acknowledge that the duty under Sec. 1.56 includes the duty to disclose

to the Office all information known to the person to be material to

patentability (as defined in Sec. 1.56(b)) which became available

between the filing date of the prior application and the national or

PCT international filing date of the continuation-in-part application.

See discussion of the proposed amendment to Sec. 1.56(e).

Section 1.64: Section 1.64 is proposed to be amended to also refer

to any supplemental oath or declaration (Sec. 1.67). In addition,

Sec. 1.64(b) is proposed to be amended to provide that if the person

making the oath or declaration is the legal representative, the oath or

declaration shall state that the person is the legal representative and

shall also state the citizenship, residence and mailing address of the

legal representative.

Section 1.67: Section 1.67(a) is proposed to be amended to also

refer to Sec. 1.162, and to provide that if the earlier-filed oath or

declaration complied with Sec. 1.63(a), the Office may permit the

supplemental oath or declaration to be made by fewer than all of the

inventors or by an applicant other than the inventor.

Section 1.67(c) is proposed to be deleted as unnecessary because it

simply reiterates other provisions of the rules of practice. If the

application was altered after the oath or declaration was signed

(except as permitted by Sec. 1.52(c)), Sec. 1.52(c) requires a

supplemental oath or declaration under Sec. 1.67. If the oath or

declaration was signed in blank (while incomplete), without review

thereof by the person making the oath or declaration, or without review

of the specification, including the claims, the oath or declaration

does not meet the requirements of Sec. 1.63. In this situation,

Sec. 1.67(a) requires a supplemental oath or declaration.

Section 1.72: Section 1.72(a) is proposed to be amended to state

``[u]nless the title is supplied in an application data sheet

(Sec. 1.76)'' to clarify that the title is not requested to be a

heading on the first page of the specification if supplied in an

application data sheet. Section 1.72(b) is proposed to be amended to

provide that ``[t]he abstract in an application filed under 35 U.S.C.

111 may not exceed 150

[[Page 53792]]

words in length'' to harmonize with PCT guidelines.

Section 1.76: A new Sec. 1.76 is proposed to be added to provide

for the inclusion of an application data sheet in an application.

Section 1.76(a) is proposed to: (1) Explain that an application data

sheet is a sheet or set of sheets containing bibliographic information

concerning the associated patent application, which is arranged in a

specified format; and (2) when an application data sheet is provided,

the application data sheet becomes part of the application. While the

use of an application data sheet is optional, the Office would prefer

its use to help facilitate the machine reading of this important

information. Entry of the information in this manner is more timely and

accurate than the current practice of presenting the information on

numerous other documents. Applicants benefit from the use of

application data sheets by being provided with more accurate and timely

filing receipts, by reducing the time required to collect bibliographic

information and by having such information printed on the granted

patents. The applicant also benefits by receiving an official notice of

the receipt of papers from the Office at an earlier stage of the

processing.

Section 1.76(b) is proposed to provide that bibliographic data as

used in Sec. 1.76(a) includes: (1) applicant information; (2)

correspondence information; (3) specified application information; (4)

representative information; (5) domestic priority information; and (6)

foreign priority information. Section 1.76(b) as proposed also reminds

applicants that the citizenship of each inventor must be provided in

the oath or declaration under Sec. 1.63 (as is required by 35 U.S.C.

115) even if this information is provided in the application data

sheet.

Applicant information includes the name, residence, mailing

address, and citizenship of each applicant (Sec. 1.41(b)). The name of

each applicant must include the family name, and at least one given

name without abbreviation together with any other given name or

initial. If the applicant is not an inventor, this information also

includes the applicant's authority (Secs. 1.42, 1.43 and 1.47) to apply

for the patent on behalf of the inventor.

Correspondence information includes the correspondence address,

which may be indicated by reference to a customer number, to which

correspondence is to be directed (see Sec. 1.33(a)).

Application information includes the title of the invention, the

total number of drawing sheets, whether the drawings are formal, any

docket number assigned to the application, the type (e.g., utility,

plant, design, reissue utility, provisional) of application.

Application information also indicates whether the application

discloses any significant part of the subject matter of an application

under a secrecy order pursuant to Sec. 5.2 of this chapter (see

Sec. 5.2(c)).

Representative information includes the registration number of each

practitioner, or the customer number, appointed with a power of

attorney or authorization of agent in the application. Section

1.76(b)(4) is proposed to state that providing this information in the

application data sheet does not constitute a power of attorney or

authorization of agent in the application (see Sec. 1.34(b)). This is

because the Office does not expect the application data sheet to be

executed (signed) by the party (applicant or assignee) who may appoint

a power of attorney or authorization of agent in the application.

Domestic priority information includes the application number

(series code and serial number), the filing date, the status (including

patent number if available), and relationship of each application for

which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).

Providing this information in the application data sheet constitutes

the specific reference required by 35 U.S.C. 119(e) or 120. While the

rules of practice (Sec. 1.78(a)(2) or Sec. 1.78(a)(4)) require that

this claim or specific reference be in the first line of the

specification the patent statute requires that a claim to the benefit

of (specific reference to) a provisional (35 U.S.C. 119(e)(1)) or

nonprovisional (35 U.S.C. 120) be in the application. Since the

application data sheet (if provided) is considered part of the

application, the specific reference to an earlier filed provisional or

nonprovisional application in the application data sheet meets the

``specific reference'' requirement of 35 U.S.C. 119(e)(1) or 120.

Foreign priority information includes the application number,

country, and filing date of each foreign application for which priority

is claimed, as well as any foreign application having a filing date

before that of the application for which priority is claimed. Providing

this information in the application data sheet constitutes the claim

for priority as required by 35 U.S.C. 119(b) and Sec. 1.55(a). The

patent statute (35 U.S.C. 119(b)) does not require that a claim to the

benefit of a prior foreign application take any particular form.

Section 1.76(c) as proposed indicates that inconsistencies between

the information in the application data sheet (if provided) and the

oath or declaration under Sec. 1.63 will be resolved in favor of the

application data sheet. This is because the application data sheet (and

not the oath or declaration) is intended as the means by which

applicants will provide information to the Office. Section 1.76(c) is

also proposed to provide that a supplemental application data sheet may

be submitted to correct or update information provided in a previous

application data sheet.

Section 1.77: Section 1.77(a) is proposed to be separated into

sections 1.77(a) and 1.77(b). New Sec. 1.77(a) would list the order of

the papers in a utility patent application, including the proposed

application data sheet (see Sec. 1.76). New Sec. 1.77(b) would list the

order of the sections in the specification of a utility patent

application. Current Sec. 1.77(b) is proposed to be redesignated

1.77(c).

Section 1.78: Section 1.78(a)(2) is proposed to be amended to

provide that the specification must contain or be amended to contain

This text is long and has been trimmed here. Open the source document for the complete record.