Changes To Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan

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DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Parts 1 and 5 [Docket No.: 2003-P-020] RIN 0651-AB64 Changes To Support Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice of proposed rulemaking.

SUMMARY:

The United States Patent and Trademark Office (Office) has established a 21st Century Strategic Plan to transform the Office into a quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system. The Office is proposing to revise the rules of practice to support the implementation of the 21st Century Strategic Plan, which involves improving the patent application and examination process by promoting quality enhancement, reducing patent pendency, and using information technology to simplify the patent application process. The more notable changes being proposed in this document involve permitting electronic signatures on a number of submissions, streamlining the requirements for incorporation by reference of prior-filed applications, and clarifying the qualifications for claiming small entity status for purposes of paying reduced patent fees. These changes to the patent application and examination process are necessary for the Office to be able to process the long-term trend of increasing numbers of applications within a reasonable time frame.

COMMENT DEADLINE DATE:

To be ensured of consideration, written comments must be received on or before November 12, 2003. No public hearing will be held.

ADDRESSES:

Comments should be sent by electronic mail message over the Internet addressed to ab64.comments@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450 or by facsimile to (703) 305-1013, marked to the attention of Hiram Bernstein

er 12, 2003. No public hearing will be held.

ADDRESSES:

The comments will be available for public inspection at the Office of Patent Legal Administration, 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: http://www.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, Senior Legal Advisor, by telephone at (703) 305-8713 or Robert J. Spar, Director, Office of Patent Legal Administration (OPLA), at (703) 308-5107, or by facsimile to (703) 305-1013, marked to the attention of Mr. Bernstein, or by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION:

to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION:

The Office has conducted a “top to bottom” review of the patent application and examination process (among other processes) as part of the 21st Century Strategic Plan. The 21st Century Strategic Plan is available on the Office's Internet Web site ( www.uspto.gov ). While many of the changes to the patent application and examination process necessary to support the 21st Century Strategic Plan require enabling legislation (and implementing rule changes), the Office has determined that a number of initiatives can be implemented under the Office's current rule making and patent examination authority set forth in 35 U.S.C. 2(b)(2), 131, and 132. This document proposes changes to the rules of practice in title 37 of the Code of Federal Regulations (CFR) to improve the patent application and examination process by promoting quality enhancement, reducing patent pendency, and using information technology to simplify the patent application process.

This document specifically proposes changes to the following sections of title 37 CFR: 1.4, 1.6, 1.8, 1.10, 1.14, 1.17, 1.19, 1.27, 1.47, 1.52, 1.53, 1.55, 1.58, 1.59, 1.69, 1.76, 1.78, 1.83, 1.84, 1.91, 1.94, 1.98, 1.102, 1.103, 1.105, 1.111, 1.115, 1.116, 1.131, 1.136, 1.137, 1.165, 1.173, 1.175, 1.178, 1.182, 1.183, 1.213, 1.215, 1.291, 1.295, 1.296, 1.311, 1.324, 1.377, 1.378, 1.502, 1.530, 1.550, 1.570, 1.644, 1.666, 1.704, 1.705, 1.741, 1.902, 1.953, 1.956, 1.957, 1.958, 1.979, 1.997, 5.12, 5.15, and 5.25. Additionally, this document proposes to amend title 37 CFR by adding new § 1.57 and removing § 1.179

102, 1.103, 1.105, 1.111, 1.115, 1.116, 1.131, 1.136, 1.137, 1.165, 1.173, 1.175, 1.178, 1.182, 1.183, 1.213, 1.215, 1.291, 1.295, 1.296, 1.311, 1.324, 1.377, 1.378, 1.502, 1.530, 1.550, 1.570, 1.644, 1.666, 1.704, 1.705, 1.741, 1.902, 1.953, 1.956, 1.957, 1.958, 1.979, 1.997, 5.12, 5.15, and 5.25. Additionally, this document proposes to amend title 37 CFR by adding new § 1.57 and removing § 1.179.

The following members of the Office of Patent Legal Administration may be contacted directly for the matters indicated:

Joni Chang ((703) 308-3858): §§ 1.8, 1.10, 1.98, 1.111, and 1.311 Jeanne Clark ((703) 306-5603): § 1.98 James Engel ((703) 308-5106): §§ 1.14, 1.17, 1.53, 1.59, 1.103, 1.131, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.644, 1.666, 1.741, 5.12, 5.15, and 5.25 Karin Ferriter ((703) 306-3159): §§ 1.6, 1.47, 1.52 (other than (e)(1)(iii) and (e)(3)), 1.58, 1.83, 1.84, and 1.165 Anton Fetting ((703) 305-8449): §§ 1.17, 1.53, 1.59, 1.103, 1.105, 1.182, 1.183, 1.295, 1.296, 1.377, 1.378, 1.644, 1.666, 1.741, 5.12, 5.15, and 5.25 Kery Fries ((703) 308-0687): §§ 1.76, 1.704, and 1.705 Hiram Bernstein ((703) 305-8713): §§ 1.91 and 1.94 Eugenia Jones ((703) 306-5586): §§ 1.8, 1.10, 1.27, 1.55, 1.57(a), and 1.78 Michael Lewis ((703)306-5585): §§ 1.4, 1.19, 1.52(e)(1)(iii) and (e)(3), 1.57, and 1.58(b) Joe Narcavage ((703) 305-1795): §§ 1.173, 1.175, 1.178, 1.179, 1.291, and 1.324 Mark Polutta ((703) 308-8122): §§ 1.213, and 1.215 Kenneth Schor ((703) 308-6710): §§ 1.98, 1.116, 1.136, 1.137, 1.291, 1.502, 1.550, 1.570, 1.902, 1.953, 1.956, 1.957, 1.958, 1.979, and 1.997 Fred Silverberg ((703) 305-8986): § 1.115 The Office will post a copy of this notice on its Internet Web site ( www.uspto.gov ). Additionally, individuals or organizations, that need a copy for the purpose of providing comments, may send a request by phone or e-mail to Elizabeth Polley at ((703) 308-6202, or elizabeth.polley@uspto.gov ) or Terry Dey at ((703) 308-1201 or terry.dey@uspto.gov ) to receive an e-mail copy of the notice

1.115 The Office will post a copy of this notice on its Internet Web site ( www.uspto.gov ). Additionally, individuals or organizations, that need a copy for the purpose of providing comments, may send a request by phone or e-mail to Elizabeth Polley at ((703) 308-6202, or elizabeth.polley@uspto.gov ) or Terry Dey at ((703) 308-1201 or terry.dey@uspto.gov ) to receive an e-mail copy of the notice. When making a request for an e-mail copy, it is requested that persons please specify whether they wish to receive the document in MS-Word, WordPerfect, or HTML format. Discussion of Specific Rules

Section 1.4: Section 1.4(d) is proposed to be amended to provide for filing correspondence with electronic signatures on electronically created correspondence documents that are filed by facsimile transmission, or hand-carried or mailed to the Office, for entry in a patent application, patent file, or

The Office considered proposing a requirement that the order of the name in a signature be identified with the language such as follows: given name, middle name or initial, family name if the name is supplied in that order. Capitalizing only the family name without identifying the order is considered a simpler and less burdensome procedure for signing a document. Comments in favor of or opposed to this alternative are invited.

Section 1.4(d)(1)(iv)(A) sets forth the specific requirements of an electronic signature (e-signature), and when the Office will accept an electronic signature in patent-related documents. The phrase “electronically signed” documents includes documents that are created and signed in a word processor program and electronically fillable forms, such as declarations generated using the program Adobe Acrobat that have pre-printed standard language with an ability to add specific information such as a signature ( e.g. , similar to those provided on the Office's Internet Web site that can be completed and signed electronically)

ments includes documents that are created and signed in a word processor program and electronically fillable forms, such as declarations generated using the program Adobe Acrobat that have pre-printed standard language with an ability to add specific information such as a signature ( e.g. , similar to those provided on the Office's Internet Web site that can be completed and signed electronically). The proposed rule change is intended to facilitate movement of documents between practitioners, applicants, and the Office. The proposed rule change does not permit the filing of Official correspondence by electronic mail ( e.g. , e-mail) messages over the Internet to the Office, but does permit submissions transmitted by facsimile. Pilot programs, such as the program at the Board of Patent Appeals and Interferences (BPAI) are not affected by this rule change ( see standing orders at the URL: http://www.uspto.gov/web/offices/dcom/bpai/standing2003May.pdf ). Electronically created documents that contain an electronic signature e-mailed from applicants to a practitioner, however, may be transmitted to the Office from a practitioner by facsimile transfer, or as a paper document. While it is not now permitted, the Office is considering expanding the means by which electronically created documents can be transmitted to the Office, such as by an e-mail attachment using the proposed signature requirements.

Paragraph 1.4(d)(1)(iv)(A) recites that electronic signatures may be utilized when the electronically signed document is: (1) Facsimile transmitted from a computer in its electronic form; (2) printed and then facsimile transmitted; or (3) printed on paper and hand or mail delivered to the Office. This paragraph also permits electronic signatures for documents submitted via the Office's Electronic Filing System (EFS). The EFS is not an e-mail system. This paragraph does not authorize delivery of documents to the Office by e-mail over the Internet

m a computer in its electronic form; (2) printed and then facsimile transmitted; or (3) printed on paper and hand or mail delivered to the Office. This paragraph also permits electronic signatures for documents submitted via the Office's Electronic Filing System (EFS). The EFS is not an e-mail system. This paragraph does not authorize delivery of documents to the Office by e-mail over the Internet.

Practitioners must take care when submitting a document intended to be unsigned by ensuring that there are no markings in a signature space or this could be determined to be indicia of a signature (either as a permanent ink signature or electronic signature).

The documents submitted under this provision may become records submitted in interference and other legal proceedings where authentication is required. Applicants and practitioners must recognize the differences in electronically created documents and paper documents for authentication purposes and take appropriate steps to be able to authenticate documents, if required. An issue with electronically created documents is that they may have embedded comments and track changes in the electronic document that are not always visible when a document is rendered using a different computer system or a different software version, or when printed to paper. Variations in how much of the embedded comments and track changes are rendered on a given computer may cause the document signer to see different document content than the contents of the document that is submitted to the Office. Additionally, establishing a chain of custody may involve proving that a document viewed by the Office is, in fact, the same document executed by the signer.

nt viewed by the Office is, in fact, the same document executed by the signer.

The Office can only authenticate a document to the extent of what is contained in Office records. Office records will not contain any of the electronic communications between the applicant or practitioner filing a document and a third party. For example, the Office cannot authenticate from its records a document ( e.g. , a § 1.132 affidavit) prepared by a third party and including a third party signature that was submitted to an applicant or practitioner electronically for resubmission to the Office. Under these circumstances, the applicant or practitioner would need to be concerned about both establishing a chain of custody to address alteration and any attempted repudiation by a third party of his or her electronic signature. In establishing the authenticity of a document, the applicant or practitioner would be attempting to show that the date of execution of the document is earlier than the date of submission to the Office, and the document was unaltered from that earlier date until its submission to the Office. A chain of custody would need to be shown and proven. Therefore, electronically created documents may require additional procedures over what may be required for a document signed with an ink signature to address chain of custody and alteration issues. In addition, there must be procedures in place to address the issue that the particular document preparation software may have undergone frequent changes. Different versions of the same software program may store and display the document, as well as comments and changes to the document, differently, which gives rise to issues concerning alteration of the document. Accordingly, applicants and practitioners must be cognizant of these issues of changed document appearance and content and take appropriate steps to ensure that their records, if in electronic form, can be rendered and authenticated at some later time as being the unaltered electronically signed original document

ument, differently, which gives rise to issues concerning alteration of the document. Accordingly, applicants and practitioners must be cognizant of these issues of changed document appearance and content and take appropriate steps to ensure that their records, if in electronic form, can be rendered and authenticated at some later time as being the unaltered electronically signed original document.

Paragraph 1.4(d)(1)(iv)(A) defines who can insert an electronic signature into an electronically created document. The proposed rule change requires that the signer “personally insert” his or her electronic signature by use of numbers and/or letters, with punctuation and spaces. To make the identity of the signer self-evident, the same electronic

Paragraph 1.4(d)(1)(iv)(A) defines the content of an electronic signature. The Office proposes to adopt a standard of numbers and/or letters, with punctuation and spaces as the electronic signature, which must be placed between two forward slashes to be consistent with the international standard and to build upon the experience gained with this standard in the Trademarks section of the office. See PCT Annex F, section 3.3.2. The electronic signature between two forward slashes cannot contain any additional forward slashes. This standard can be met with any standard personal computer (PC) and keyboard. The Office also recognizes that many practitioners sign their name with the number character (#) as part of his or her registration number. The use of the number character (#) as part of the registration number would be permitted but not otherwise, such as utilization of a customer number as the signature. Other non-text characters would not be permitted, as a typed symbol in one font may vary when viewed in a different font ( e.g. , the code for the euro currency symbol in one font produces a different currency symbol when viewed in another font)

e number character (#) as part of the registration number would be permitted but not otherwise, such as utilization of a customer number as the signature. Other non-text characters would not be permitted, as a typed symbol in one font may vary when viewed in a different font ( e.g. , the code for the euro currency symbol in one font produces a different currency symbol when viewed in another font).

The Office recognizes that periods, commas, and hyphens are often found in names and will therefore be found in many signatures. Appropriate punctuation and spaces may be used with numbers and letters, not in place of numbers and letters in a signature. Hence, the use of appropriate punctuation and spaces with letters and numbers would be permitted ( e.g. , periods, commas and hyphens). A signature of only punctuation marks ordinarily does not identify any person, and would be improper. Also, punctuation marks, such as question marks ( e.g. , /???/), are often utilized to represent the intent not to sign a document and would be improper.

To avoid processing delays, the Office needs to readily determine whether a document has been signed. The filing of a document does not imply that the document has been signed. The Office does not want to investigate as to whether a mark ( e.g. , extraneous marks or a non-permanent ink presentation of a name) comprises a signature. Therefore, the Office will only interpret the data presented between forward slashes as an electronic signature. Hence, documents intended to be unsigned should be very clear that any data presented between forward slashes is not intended to be a signature.

clear that any data presented between forward slashes is not intended to be a signature.

Similarly, presentation of just numbers and letters in an electronically produced document without forward slashes will be treated under this part as an unsigned document. Script fonts are not permitted for any portion of a document, which would include a name typed in a signature area. See § 1.52(b)(2)(ii). Accordingly, presentation of a typed name without the required slashes even in a script font does not present the proper indicia manifesting an intent to sign and will not be accepted as an electronic signature.

Paragraph (d)(1)(iv)(A) requires the signer's actual name be used except as provided in paragraph (d)(1)(iv)(B), where an electronic signature is used that differs from the actual name of the signer. Where an electronic signature is not the signer's actual name, the actual name must be printed or typed and clearly indicated as the signer's actual name. The use of lower case and capital letters is permitted except that the family name must be entirely capitalized with no other names entirely capitalized. A middle initial if capitalized and presented with a period to identify it as an abbreviation is permitted. A person with an electronic signature that includes both a single character family name and at least one other single character name must provide an electronic signature with all single character names other than the family name in non-capital letters. Titles may be used with the signer's name and can be placed within or after the slash marks. When the last name is given first it will be presumed to be followed by a first name before any middle name. Similarly, when a last name is given last it will be presumed that the first name will precede a middle name. Where two or more multiple character names are capitalized, the Office will need to inquire as to which is the last name

er's name and can be placed within or after the slash marks. When the last name is given first it will be presumed to be followed by a first name before any middle name. Similarly, when a last name is given last it will be presumed that the first name will precede a middle name. Where two or more multiple character names are capitalized, the Office will need to inquire as to which is the last name.

To accommodate as many varieties of names as possible a signer may select any combination of letters and/or numbers for his or her signature under § 1.4(d)(1)(iv)(A). A signature that is the actual name of the signer need not be accompanied by a typed or printed name. Accordingly, the absence of a printed or typed name clearly identified as the actual name of the signer is a representation that the signature is the signer's actual name.

The Office considered accepting an actual name as a signature without requiring that the order of names be identified. A signature of an actual name has been found by the Office insufficient to identify the signer. For example, some people routinely sign with his or her last (or family) name first. Similarly, for people with first and last names that are commonly interchanged as first and last names, it may not be self-evident which is the given name and which is the family name. A printed or typed copy of the signer's name immediately below the signature often will have the same problem of which is the family name and which is the given name.

low the signature often will have the same problem of which is the family name and which is the given name.

The Office considered proposing a standard signature format such as family name first, followed by given name. A standard signature format was rejected because it would not aid the Office in identifying the signer of a document, particularly where the format is not adhered to by the signer. The Office is receiving applications and correspondence for other patent-related matters in which it cannot be determined who signed the document and/or what the actual name of the signer is because either the order of the family name and given name are unclear, or more than one signer has the same name. Adopting a standard signature format would not make it any easier for the Office to detect in many cases when the order of family name, given name, and middle name are in a non-standard order.

In the following discussion, family name is intended to be synonymous with the terms “surname” or “last name” in the customary format for European-American names. Similarly, given name is intended to be synonymous with the term “first name” in the customary format for European-American names. Format and content of a signature are both critical because people from different countries throughout the world have different customs for signing a name, e.g. , reversing the order of family ( i.e. , last) i.e. , first) name. Current rules and procedures for most communications do not require applicants and practitioners to utilize any format for the signature. A person may currently use a signature with his or her family name as the first name or the last name of the signature. Further, it is common for a person to abbreviate his or her given name ( e.g. , William Jefferson Louis, as W. Jefferson Louis), which, if signed with the last name first, would appear as a middle initial ( i.e. , Louis W. Jefferson)

oners to utilize any format for the signature. A person may currently use a signature with his or her family name as the first name or the last name of the signature. Further, it is common for a person to abbreviate his or her given name ( e.g. , William Jefferson Louis, as W. Jefferson Louis), which, if signed with the last name first, would appear as a middle initial ( i.e. , Louis W. Jefferson). The Office is receiving communications from people all over the world with different signature formats and the Office cannot readily identify the family name and given name of the signer.

This lack of consistency in signing order is exacerbated in many patent applications because a person's name may appear in several places in the record of an application in a different format ( e.g. , first name and last name reversed) in each occurrence. In addition, the Office has found at least two applicants and/or practitioners in the same firm with the given and family names in reverse order ( e.g. , first practitioner is Mitchell Louis, and the second practitioner is Louis Mitchell). Signatures have been found with the printed or typed name under the signature appearing as the reverse of the signature ( e.g. , /Louis Mitchell/ with Mitchell Louis typed immediately underneath). In view of the differing customs for the order of signing names, the Office is frequently unable to ascertain the identity of the signer ( e.g. , in the example given, is Louis Mitchell or Mitchell Louis the signer). The identity of the signer is not self-evident in applications with applicants and/or practitioners that have reversed versions of the same names, and when the order of names in a signature is the reverse order in the adjacent printed/typed version of the signer's name. This often results in confusion in the Office, and later in the public when reviewing Office records, as to the actual name and identity of the signer of a document or a patentee when an application is issued

and/or practitioners that have reversed versions of the same names, and when the order of names in a signature is the reverse order in the adjacent printed/typed version of the signer's name. This often results in confusion in the Office, and later in the public when reviewing Office records, as to the actual name and identity of the signer of a document or a patentee when an application is issued.

To avoid confusion as to whether a registered practitioner is relying on his or her registration for signing a document, § 1.4(d)(1)(iv)(A) recites that a practitioner signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) of this part must place his or her complete name, as registered, and his or her registration number, with or immediately adjacent his or her electronic signature. A number character (#) may only be used in a signature if it is prior to a practitioner's registration number that is part of the electronic signature. When a practitioner is signing as an assignee, or as an applicant (inventor) pursuant to §§ 1.33(b)(3) or 1.33(b)(4), a registration number is not required but may be supplied.

The requirement that an electronic signature for practitioners be accompanied by an identification of the family name, and registration number, is consistent with Article 9(1) of the Patent Law Treaty (June 1, 2000) (PLT).

Paragraph 1.4(d)(1)(iv)(B) recites the requirements for when a signer uses an electronic signature that is not the person's actual name. The Office expects that where persons do not sign with their actual name it is because they are using an e-signature that is the normal e-signature for that person and not something that is employed to obfuscate or misidentify the signer. Where the e-signature is not the actual name because the signer is using the signer's normal e-signature, the actual name must be presented in printed or typed form with the last name in capitals. The printed or typed name must be clearly identified as the actual name

signature that is the normal e-signature for that person and not something that is employed to obfuscate or misidentify the signer. Where the e-signature is not the actual name because the signer is using the signer's normal e-signature, the actual name must be presented in printed or typed form with the last name in capitals. The printed or typed name must be clearly identified as the actual name. To accommodate as many signatures as possible, a signer may select any combination of letters and/or numbers for his or her signature. The flexibility in selecting combinations of letters and/or numbers for signatures means that the identity of the signer may not be clear from the signature if it is not an actual name. For example, a collection of letters/numbers when presented for the first time without a full printed or typed name that does not appear to be a person's name ( e.g. , /123456XYZ/) does not identify any person as the signer. This is so even where the signer has submitted a previous document with such signature and an additional identification of the actual name of the signer. Similarly, where the signature, because it is not the signer's actual name, appears to represent an identifiable person with a name different in some respects from those persons authorized to sign and who are of record in an application, the name of the signer in the signature alone would not be sufficient to identify the signer.

Paragraph 1.4(d)(1)(iv)(B) requires that where the signer's usual electronic signature is not the signer's actual name, the signer must provide his or her actual name by printing or typing the actual name and clearly identifying it as such. The signer must further identify in the printed or typed actual name the signer's family name by entirely capitalizing only the family name. These requirements are consistent with PLT Rule 9. Registered practitioners signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) of this part, or where the signer otherwise ( e.g

actual name by printing or typing the actual name and clearly identifying it as such. The signer must further identify in the printed or typed actual name the signer's family name by entirely capitalizing only the family name. These requirements are consistent with PLT Rule 9. Registered practitioners signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) of this part, or where the signer otherwise ( e.g. , to distinguish two practitioners with the same name) includes a registration number when it is not required by rule, should provide the registration number after the signature, or the printed or typed name immediately below the signature.

A typed or printed name in the body of the text is not usually self-identifying as to whether it is the signer's actual name, or even the name of some other person. A clear indication that it is the signer's actual name is necessary to distinguish it from the other possibilities where the signature is not the actual name and a printed or typed name has not been supplied with the signature. Similarly, the order of the names, family name, given name, middle name or initial, unless supplied is not self-evident from the printed or typed name alone so the order must be indicated by entirely capitalizing only the family name.

The Office strongly suggests that each signer use a signature (electronic or otherwise) that has his or her full name including full middle name. The Office recommends that registered practitioners use their full name under which they are registered and always include their registration number with the signature or with the hand-written or typed name that accompanies a signature. Examples of proper and improper signatures will be posted on the Office's Internet Web site.

Paragraph 1.4(h) proposes requiring a ratification or confirmation of a signature, such as where the Office has reasonable doubt as to the authenticity (veracity) of the signature

ays include their registration number with the signature or with the hand-written or typed name that accompanies a signature. Examples of proper and improper signatures will be posted on the Office's Internet Web site.

Paragraph 1.4(h) proposes requiring a ratification or confirmation of a signature, such as where the Office has reasonable doubt as to the authenticity (veracity) of the signature. The Office may additionally inquire in regard to a signature simply to identify the signer and clarify the record where the identity of the signer is unclear. The inquiries concerning the authenticity (veracity) of a signature are consistent with PLT Article 8(4)(c) and Rules 7(4), 15(4), 16(6), 17(6), and 18(4). An example of when ratification or confirmation of a signature may be required is when there are variations in a signature or whenever a name in an e-signature is not exactly the same as the name indicated as an inventor, or a practitioner of record. Hence, whatever signature is adopted by a signer, that signature should be consistently used on all documents. Also addressed is the treatment of variations in a signature when a printed or typed name accompanies the e-signature but the identity of the signer is unclear. In such cases, the Office may require ratification or confirmation of a signature. Ratification or confirmation alone does See Manual of Patent Examining Procedure § 605.04(c) (8th. ed. 2001) (Rev. 1, Feb. 2003) (MPEP).

The Office is proposing to treat failure to follow the format and content of a standard signature as an unsigned document. Treating the documents as being unsigned could have varying results dependent on the nature of the document. For example, in new applications, treating an oath or declaration as an unsigned oath or declaration could result in the imposition of a surcharge. See § 1.53(f)(1). Other correspondence could be treated under the procedures for unsigned amendment documents set forth in MPEP §§ 714.01 and 714.01(a)

the documents as being unsigned could have varying results dependent on the nature of the document. For example, in new applications, treating an oath or declaration as an unsigned oath or declaration could result in the imposition of a surcharge. See § 1.53(f)(1). Other correspondence could be treated under the procedures for unsigned amendment documents set forth in MPEP §§ 714.01 and 714.01(a).

As previously indicated, the Office is requesting comments on the alternative of requiring labeling the order of names in a signature in place of the proposed rule requiring capitalization of the entire family name.

Section 1.6 : Section 1.6(d)(4) is proposed to be amended to provide that black and white drawings in patent applications may be transmitted to the Office by facsimile in order to provide more flexibility to applicants for filing individual papers in applications that contain drawings. Drawings are now permitted to be transmitted to the Office by facsimile when accompanied by payment of the issue fee, and drawings received by facsimile have been of an acceptable quality. See Payment of the Issue Fee and Filing Related Correspondence by Facsimile , 1254 Off. Gaz. Pat. Office 91 (Jan. 15, 2002). Although the rules of practice will now permit the submission of black and white drawings by facsimile, photographs or drawings with detail should not be transmitted by facsimile. Furthermore, color drawings must continue to be hand-carried or mailed to the Office instead of being transmitted by facsimile. In addition, the Office will publish drawings that are received as long as they can be scanned, and will not, in general require replacement drawings to replace drawings transmitted by facsimile, even if the facsimile transmission process results in the drawings being less sharp than the original drawings.

Section 1.6(e) is proposed to be removed and reserved because the provisions of § 1.6(e) are deemed more appropriately placed in § 1.10

that are received as long as they can be scanned, and will not, in general require replacement drawings to replace drawings transmitted by facsimile, even if the facsimile transmission process results in the drawings being less sharp than the original drawings.

Section 1.6(e) is proposed to be removed and reserved because the provisions of § 1.6(e) are deemed more appropriately placed in § 1.10. This is because the “Express Mail” provisions of § 1.10 are the only means by which correspondence can be accorded a filing date other than the actual date of receipt in the Office. Thus, the provisions of § 1.6(e) are proposed to be transferred to § 1.10 along with some changes. Proposed § 1.10(g) and (h) specifically address situations in which “Express Mail” is returned or refused by the United States Postal Service (USPS). Proposed § 1.10(i) is similar to § 1.6(e) and addresses situations where there is a designated interruption or emergency in “Express Mail” service.

Section 1.8 : Section 1.8(a) is proposed to be amended to clarify that the provisions of this section do not apply to time periods or situations set forth in sections that have been expressly excluded from § 1.8 as well as situations enumerated in § 1.8(a)(2).

Section 1.8(b) is also proposed to be amended to permit notifying the Office of a previous mailing, or transmitting, of correspondence, when “a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence.”

Section 1.8(b) is also proposed to be amended to make it clear that it is not the reexamination proceeding which is concluded under §§ 1.550(d) or 1.957(b), but rather the prosecution of the reexamination. See the discussion as to the amendment of § 1.550 for the rationale for this change.

It is further proposed that § 1.8(b) be revised to more appropriately set forth the § 1.957(c) consequences of a failure to respond in an inter partes reexamination

clear that it is not the reexamination proceeding which is concluded under §§ 1.550(d) or 1.957(b), but rather the prosecution of the reexamination. See the discussion as to the amendment of § 1.550 for the rationale for this change.

It is further proposed that § 1.8(b) be revised to more appropriately set forth the § 1.957(c) consequences of a failure to respond in an inter partes reexamination.

The proposed amendment to § 1.8(a) is to clarify that the list enumerated in § 1.8(a)(2) is not exhaustive. Provisions of § 1.8 also do not apply to the time periods or situations set forth in sections that have been explicitly excluded from § 1.8. For example, provisions of § 1.8(a) do not apply to time periods and situations set forth in §§ 1.217(e) and 1.703(f) because the exceptions are provided explicitly in § 1.217(e), “[t]he provisions of § 1.8 do not apply to the time periods set forth in this section” and § 1.703(f), “[t]he date indicated on any certificate of mailing or transmission under § 1.8 shall not be taken into account in [a patent term adjustment] calculation.”

Recently, many applicants had experienced substantial delays in delivery of their correspondence by the USPS to the Office. These applicants did not wish to wait until the application is held to be abandoned before notifying the Office of the previous mailing, or transmitting, of the correspondence and supplying a duplicate copy of the correspondence and requisite statement in accordance with § 1.8(b)(3).

ling, or transmitting, of the correspondence and supplying a duplicate copy of the correspondence and requisite statement in accordance with § 1.8(b)(3).

Under the proposed amendment to § 1.8(b), in the event that correspondence is considered timely filed by being mailed or transmitted in accordance with § 1.8(a), but not received in the Office after a reasonable amount of time has elapsed ( e.g. , more than one month from the time the correspondence was mailed), the applicants would not be required to wait until the end of the maximum extendable period for reply set in a prior Office action (for the Office to hold the application to be abandoned) before informing the Office of the previous submitted correspondence and supplying a duplicate copy and requisite statement. Thus, filing a petition to withdraw the holding of abandonment would not be necessary in such circumstance. The proposed amendment to § 1.8(b) would provide applicants an expedited procedure in resolving substantial delayed mail problems.

Before notifying the Office of a previously submitted correspondence that is not received by the Office, applicants are encouraged to check the Patent Application Information Retrieval (PAIR) System (which can be accessed over the Office's Internet Web site at http://pair.uspto.gov ) to see if the correspondence has been entered into the application file. The PAIR system is a system which enables applicants to access the Office's electronic records for a patent application or patent. Private PAIR is available to applicants who have a customer number associated with the correspondence address for an application and who have acquired the access software (Entrust Direct Software and a PKI certificate). Applicants may contact the Electronic Business Center (EBC) at (703) 305-3028 for more information on PAIR

ccess the Office's electronic records for a patent application or patent. Private PAIR is available to applicants who have a customer number associated with the correspondence address for an application and who have acquired the access software (Entrust Direct Software and a PKI certificate). Applicants may contact the Electronic Business Center (EBC) at (703) 305-3028 for more information on PAIR.

The proposal that § 1.8(b) be revised to more appropriately set forth the § 1.957(c) consequences of a failure to respond in an inter partes reexamination is necessary to clarify that the inter partes reexamination prosecution is neither terminated nor concluded where the patent owner fails to timely respond to an Office action, and claims in the proceeding remain patentable. Rather, an Office action is issued to thereby permit the third party requester to challenge the claims found patentable. As set forth in § 1.957(c), “[i]f claims are found patentable and the patent owner fails to file a timely and appropriate response to any Office action in an inter partes reexamination proceeding, further prosecution will be limited to the claims found patentable at inter partes reexamination prosecution which has been limited as to further prosecution under § 1.957(c). In addition, the amendment is intended to apply to the § 1.957(a) situation where the third party requester files an untimely comment, notice of appeal or brief in an inter partes reexamination, and the paper would thus be refused consideration (to thereby limit the requester's prosecution) if not for the operation of the § 1.8(b) remedy.

Section 1.10: Section 1.10 is proposed to be amended to add paragraphs (g), (h), and (i) to address the effects of interruptions or emergencies in USPS “Express Mail” service. For example, Friday, November 16, 2001, the USPS issued a memorandum temporarily and immediately suspending “Express Mail” service to Washington DC zip codes 202xx through 205xx

ot for the operation of the § 1.8(b) remedy.

Applicants frequently rely on the benefits under § 1.10 to obtain a particular filing date for a new application. The filing date accorded to an application is often critical. For example, applicants who do not file their applications in the United States within one year from when their invention was first described in a printed publication or in public use or on sale in this country are not entitled to a patent. ( See 35 U.S.C. 102(b)). Furthermore, to be able to claim the benefit of a provisional application or to claim priority to a foreign application, the nonprovisional application claiming benefit or priority must be filed within one year from the filing of the provisional application or foreign application, respectively. Therefore, the means by which applicants may remedy the effects of an interruption or emergency in USPS Express Mail service which has been so designated by the Director should be specifically addressed in the rules of practice.

The Office published a notice on October 9, 2001, that provides guidance in the situations in which a post office refuses to accept the deposit of mail for delivery by “Express Mail” Service and situations in which “Express Mail” is deposited into an “Express Mail” drop box and given an incorrect “date-in.” See United States Postal Service Interruption and Emergency , 1251 Off. Gaz. Pat. Office 55 (Oct. 9, 2001)

ished a notice on October 9, 2001, that provides guidance in the situations in which a post office refuses to accept the deposit of mail for delivery by “Express Mail” Service and situations in which “Express Mail” is deposited into an “Express Mail” drop box and given an incorrect “date-in.” See United States Postal Service Interruption and Emergency , 1251 Off. Gaz. Pat. Office 55 (Oct. 9, 2001). The procedure for where the USPS refuses to accept the deposit of mail for delivery by “Express Mail” as contained in the notice, however, has not been incorporated into the rules of practice.

The Offices's existing framework to address postal emergencies is detailed in § 1.6(e), “Interruptions in U.S. Postal Service.” Section 1.6(e) provides that if interruptions or emergencies in the USPS which have been so designated by the Director occur, the Office will consider as filed on a particular date in the Office any correspondence which is: (1) Promptly filed after the ending of the interruption or emergency; and (2) accompanied by a statement indicating that the correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the USPS.

The provisions of § 1.6(e) are more appropriate in § 1.10 since “Express Mail” is the only means by which correspondence can be accorded a filing date other than the actual date of receipt in the Office. Thus, the provisions of § 1.6(e) are proposed to be transferred to § 1.10 along with some changes. Proposed § 1.10(g) and (h) specifically address situations in which “Express Mail” is returned or refused by the USPS. Proposed § 1.10(i) is similar to § 1.6(e) and addresses situations where there is a designated interruption or emergency in “Express Mail” service.

posed § 1.10(i) is similar to § 1.6(e) and addresses situations where there is a designated interruption or emergency in “Express Mail” service.

Section § 1.10(g) is proposed to be added to provide that any person who attempts to file correspondence by “Express Mail” that was returned by the USPS may petition the Director to consider the correspondence as filed on a particular date in the Office. The petition must be filed promptly after the person becomes aware of the return of the correspondence and the number of the “Express Mail” mailing label must have been placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail.” The petition must also include the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon and a copy of the “Express Mail” mailing label showing the “date-in.” Furthermore, the petition must include a statement, which establishes to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or the copy is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date.

Section 1.10(h) is proposed to be added to provide that any person who attempts to file correspondence by “Express Mail” that was not accepted by the USPS may petition the Director to consider the correspondence as filed on a particular date in the Office. The petition must be filed promptly after the person becomes aware of the refusal of the correspondence and the number of the “Express Mail” mailing label must have been placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by “Express Mail.” The petition must also include the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon

on becomes aware of the refusal of the correspondence and the number of the “Express Mail” mailing label must have been placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by “Express Mail.” The petition must also include the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon. In addition, the petition must include a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or the copy is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

Section 1.10(i) is proposed to be added to provide that any person attempting to file correspondence by “Express Mail” who was unable to deposit the correspondence with the USPS due to an interruption or emergency in “Express Mail” service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office. This material is proposed to be transferred from § 1.6. The petition must be filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in “Express Mail” service. The petition must also include the original correspondence or a copy of the original correspondence, and a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in “Express Mail” service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date

hich establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in “Express Mail” service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

Proposed § 1.10(i) requires the Director to designate an interruption or emergency in “Express Mail” service. It is envisioned that in the notice designating the interruption or emergency the Director would provide guidance on the manner in which petitions under proposed § 1.10(i) should be filed. This is similar to what occurred when “Express Mail” was

Section 1.14: Section 1.14(h)(1) is proposed to be amended to refer to the petition fee set forth in § 1.17(g) for consistency with the change to § 1.17. See discussion of § 1.17.

Section 1.17: Section 1.17 is proposed to be amended to adjust petition fees to more accurately reflect the Office's cost of treating petitions. The petitions whose fees are currently provided for in § 1.17(h) are outside the scope of the usual processing of patent applications provided for in 35 U.S.C. 41(a) and (b). The Office is directed by 35 U.S.C. 41(d) to set fees for services not set under 35 U.S.C. 41(a) or (b) so as to recover the average costs of performing the processing or service.

The Office has conducted an activity-based-accounting cost (ABC) analysis of the Office's cost of treating the various petitions enumerated under § 1.17(h) based on current practices and staffing costs. The Office has determined that the petition fee set forth in § 1.17(h) does not recover the Office's costs of treating petitions for a number of the types of petitions enumerated under § 1.17(h). The Office has also determined that there is a significant difference in the Office's costs for treating the various types of petitions enumerated under § 1.17(h)

on current practices and staffing costs. The Office has determined that the petition fee set forth in § 1.17(h) does not recover the Office's costs of treating petitions for a number of the types of petitions enumerated under § 1.17(h). The Office has also determined that there is a significant difference in the Office's costs for treating the various types of petitions enumerated under § 1.17(h). Therefore, the Office is proposing to separate the petitions enumerated under § 1.17(h) into three groups, and to charge separate petition fees for each of these three groups of petitions, which petition fees will more accurately reflect the cost of treating petitions in these three groups.

The first group of petitions will be covered by a new § 1.17(f), which will specify a petition fee of $400. The petitions in this group are: (1) Petitions under § 1.53(e) to accord a filing date; (2) petitions under § 1.57(a) to accord a filing date; (3) petitions under § 1.182 for decision on a question not specifically provided for; (4) petitions under § 1.183 to suspend the rules; (5) petitions under § 1.378(e) for reconsideration of decision on petition refusing to accept delayed payment of maintenance fee in an expired patent; (6) petitions under § 1.644(e) in an interference; (7) petitions under § 1.644(f) for requesting reconsideration of a decision on petition in an interference; (8) petitions under § 1.666(b) for access to an interference settlement agreement; (9) petitions under § 1.666(c) for late filing of an interference settlement agreement; and (10) petitions under § 1.741(b) to accord a filing date to an application under § 1.740 for extension of a patent term. Petitions in this first group require analysis of complex and unique factual situations and evidentiary showings. Often a petition in this group will involve an issue of first impression requiring review and approval of a course of action by senior Office officials

agreement; and (10) petitions under § 1.741(b) to accord a filing date to an application under § 1.740 for extension of a patent term. Petitions in this first group require analysis of complex and unique factual situations and evidentiary showings. Often a petition in this group will involve an issue of first impression requiring review and approval of a course of action by senior Office officials.

The second group of petitions will be covered by a new § 1.17(g), which will specify a petition fee of $200. The petitions in this group are: (1) Petitions under § 1.12 for access to an assignment record; (2) petitions under § 1.14 for access to an application; (3) petitions under § 1.47 for filing by other than all the inventors or a person not the inventor; (4) petitions under § 1.59 for expungement of information; (5) petitions under § 1.103(a) to suspend action in an application; (6) petitions under § 1.136(b) to review requests for extension of time when the provisions of section 1.136(a) are not available; (7) petitions under § 1.138(c) to expressly abandon an application to avoid publication; (8) petitions under § 1.295 for review of refusal to publish a statutory invention registration; (9) petitions under § 1.296 to withdraw a request for publication of a statutory invention registration filed on or after the date the notice of intent to publish issued; (10) petitions under § 1.377 for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a patent; (11) petitions under § 1.550(c) for patent owner requests for extension of time in ex parte reexamination proceedings; (12) petitions under § 1.956 for patent owner requests for extension of time in inter partes reexamination proceedings; (13) petitions under § 5.12 for expedited handling of a foreign filing license; (14) petitions under § 5.15 for changing the scope of a license; and (15) petitions under § 5.25 for a retroactive license

t owner requests for extension of time in ex parte reexamination proceedings; (12) petitions under § 1.956 for patent owner requests for extension of time in inter partes reexamination proceedings; (13) petitions under § 5.12 for expedited handling of a foreign filing license; (14) petitions under § 5.15 for changing the scope of a license; and (15) petitions under § 5.25 for a retroactive license. Petitions in this second group also require analysis of factual situations and evidentiary showings; however, the factual situations and evidentiary showings for this second group of petitions often fall into recognizable patterns. On occasion, however, a petition in this second group will involve an issue of first impression requiring review and approval of a course of action by senior Office officials.

The third group of petitions will be covered by § 1.17(h), which will continue to specify a petition fee of $130. The petitions in this group are: (1) Petitions under § 1.19(h) to request documents in a form other than that provided in this part; (2) petitions under § 1.84 for accepting color drawings or photographs; (3) petitions under § 1.91 for entry of a model or exhibit; (4) petitions under § 1.102(d) to make an application special; (5) § 1.313 to withdraw an application from issue; and (6) petitions under § 1.314 to defer issuance of a patent. Petitions in this third group require review for compliance with the applicable procedural requirements, but do not often require analysis of varied factual situations or evidentiary showings.

Section 1.17(i) is proposed to be amended to provide a processing fee so that replacement drawings submitted within the period set forth in § 1.215(a) can be included in any patent application publication. This will replace the current requirement for a petition fee under § 1.17(h) for the petition under § 1.182 which is required for such replacement drawings to be accepted for inclusion in any patent application publication

to be amended to provide a processing fee so that replacement drawings submitted within the period set forth in § 1.215(a) can be included in any patent application publication. This will replace the current requirement for a petition fee under § 1.17(h) for the petition under § 1.182 which is required for such replacement drawings to be accepted for inclusion in any patent application publication. See Drawings in Patent Application Publications and Patents, 1242 Off. Gaz. Pat. Office 114 (Jan. 16, 2001). See also a conforming amendment to § 1.215(a).

Sections 1.17(l) and (m) are proposed to be revised to make it clear that the reexamination proceeding is not terminated under §§ 1.550(d) or 1.957(b), but rather the prosecution of the reexamination is concluded under §§ 1.550(d) or 1.957(b). See the discussion below as to the amendment of § 1.550 for the rationale for this change.

Section 1.19: Section 1.19 is proposed to be amended to clarify that copies of documents may be provided in whole, or in part, in electronic image form at the Office's option. Additionally, § 1.19(b) is proposed to be amended to provide how copies of Image File Wrapper (IFW) contents are to be charged. Further, it is proposed to eliminate the seven-day requirement of § 1.19(b)(1) for processing copy requests, and to eliminate the phrase “that were submitted in electronic form on a physical media” from § 1.19(b)(3). Paragraphs (g) and (h) would be added to provide for supplying copies of unscanned documents and to provide for a petition to obtain copies of documents in a form other than provided for in the rules of practice.

In view of the ever-increasing (paper) submissions, many of the Office official records need to be, and are going to be, stored and maintained in electronic form

dia” from § 1.19(b)(3). Paragraphs (g) and (h) would be added to provide for supplying copies of unscanned documents and to provide for a petition to obtain copies of documents in a form other than provided for in the rules of practice.

In view of the ever-increasing (paper) submissions, many of the Office official records need to be, and are going to be, stored and maintained in electronic form. As a result of the Office's

Section 1.19(b) is proposed to be amended in view of the current migration of Office records from paper file wrappers to their electronic image equivalent with the image file wrapper (IFW) system as the repository of official Office records. See USPTO Announces Prototype of Image Processing, 1265 Off. Gaz. Pat. Office 87 (Dec. 17, 2002), and See Changes To Implement Electronic Maintenance of Official Patent Application Records, 68 FR 38611 (June 30, 2003). The instant proposed rule change clarifies how copies of IFW contents are to be charged, as the current rule would otherwise not provide a way for the public to obtain copies given the absence of a paper file wrapper for the Office to copy when IFW replaces the paper file wrapper as the source of copies.

Sections 1.19(b)(1) and (2) are proposed to be amended to reflect the change to IFW from paper file wrappers. Currently when documents are submitted to the Office in paper or on compact disc, copies of a file wrapper and documents contained therein may be made from the original paper or compact disc submission. If a scanned image is used to make copies of an application as originally filed, the scanned image corresponds to a paper file wrapper. In the future, there will be no paper file wrapper corresponding to scanned image files in the IFW System. As the Office uploads its records to the IFW system, the instant proposed change will permit the Office to supply to the public copies of Office documents directly from the IFW system regardless of format and media of the initial submission ( e.g. , paper, electronic, or compact disc)

rapper. In the future, there will be no paper file wrapper corresponding to scanned image files in the IFW System. As the Office uploads its records to the IFW system, the instant proposed change will permit the Office to supply to the public copies of Office documents directly from the IFW system regardless of format and media of the initial submission ( e.g. , paper, electronic, or compact disc). After uploading into IFW, the original submission may not be retained or be in an easily retrievable form for copying.

The existing §§ 1.19(b)(1) and (2) do not provide for supplying copies of the non-paper portion of a file wrapper ( e.g. , compact discs). Under the current practice, for example, copies of compact discs associated with a file wrapper must be ordered under existing § 1.19(b)(3) and are not provided with an order under existing §§ 1.19(b)(1) or 1.19(b)(2). Nothing in these proposed rule changes will change this practice. Similarly, any materials not in the IFW portion of a file wrapper ( e.g. , blueprints, microfiche, and video cassettes) are not included in these current sections or as proposed to be amended. To the extent, however, that documents may be uploaded from compact discs to be part of an IFW, those documents will be included with the IFW copy. In the event the Office cannot fill an order solely from the IFW, and must complete an order in part by copying paper files or compact discs, the fees of § 1.19(b)(2)(i) for pages over 400 will apply to any copies made from paper files, except those provided for under § 1.19(g) ( e.g. , blueprints), in which case the fee of § 1.19(g) will apply, and the fee for compact disc copies under § 1.19(b)(3) will apply to the copies of compact discs.

ee for compact disc copies under § 1.19(b)(3) will apply to the copies of compact discs.

Patent applications and patents will normally reference any compact discs that are a part of the application specification. The public should therefore review the specification to determine if an order for compact discs should be included with an order to obtain the contents of an application or file wrapper. Other materials associated with a file wrapper ( e.g. , blueprints, video cassettes, compact discs exhibits not part of the specification) are not referenced in the specification of an application or patent. The Office does not maintain an index of other materials associated with any specific file wrapper.

Accordingly, the public should carefully review the contents of a file wrapper to determine if other materials associated with a file wrapper need to be separately ordered.

Customers will not be able to select the source for documents under §§ 1.19(b)(1) and (2) for filling an order.

The Office's experience with providing copies from an image system is that it is faster than providing copies from paper and it allows the Office to provide copies for regular orders with the same speed as expedited service. The service is also cheaper for the public so that excess page fees can be eliminated in most cases. The Office is considering charging a single fee for copies made from the IFW to recover an average cost and limiting the additional fee of § 1.19(b)(2)(ii) to paper copy non-IFW documents rather than actual cost depending on size, if public comment is favorable. The Office believes public comment should be favorable because it will result in lower overall costs to the public and faster service. Lowered costs to the public and the Office occur because there will not need to be separate analysis and billing of the number of pages and excess pages copied. Faster service will occur because the Office will not have to delay orders while additional charges for excess pages are processed

comment should be favorable because it will result in lower overall costs to the public and faster service. Lowered costs to the public and the Office occur because there will not need to be separate analysis and billing of the number of pages and excess pages copied. Faster service will occur because the Office will not have to delay orders while additional charges for excess pages are processed. Also, since the Office can provide the copies within a short period of time which would be faster than a seven-day service, at the same fee, it is proposed to remove the references to the slower non-expedited service, i.e. , “seven-day.”

Section 1.19(b)(3) is proposed to be amended by revising “on compact disc” to “in electronic form on a physical media” so that documents submitted on electronic forms other than compact discs may be made available on compact disc for the same fee as documents submitted on compact disc.

Section 1.19(g) is proposed to be added to provide for copying material that is not image scanned. Materials such as large blueprints, microfiche, and video cassettes cannot be scanned as electronic image equivalents, and an average cost for pricing cannot be computed in advance, because the demand for such copies is so infrequent. The Office proposes to charge the actual cost of copying of these materials.

Section 1.19(h) is proposed to provide for a mechanism for requesting copies of documents in a form other than that normally provided by the Office. The copies would be provided at cost. For example, a copy of an application so voluminous that it required many boxes of compact discs might be requested under this part on some other media such as DVD media instead of compact discs. Petitions would be decided under this section based upon the ability of the Office to provide the requested service and the adverse impact to the Office and the public from diverting resources to fulfilling the order.

Section 1.27: Section 1.27 is proposed to be amended to make certain clarifying changes

be requested under this part on some other media such as DVD media instead of compact discs. Petitions would be decided under this section based upon the ability of the Office to provide the requested service and the adverse impact to the Office and the public from diverting resources to fulfilling the order.

Section 1.27: Section 1.27 is proposed to be amended to make certain clarifying changes. The proposed changes would clarify that: (1) A security interest held by a large entity would not be a sufficient interest to bar entitlement to small entity status; (2) the requirements for small business concerns regarding transfer of rights and the size standards of the Small Business Administration are additive; and (3) business concerns are not precluded from claiming small entity status merely because they are located in or operate primarily in a foreign country.

Section 1.27 is proposed to be amended to revise paragraphs (a)(1), (a)(2)(i), and (a)(3)(i) to change “obligation” to “currently enforceable

A few additional examples will further clarify when small entity status is or is not appropriate.

Example 1: On January 2, 2002, an application is filed with a written assertion of small entity status and the small entity filing fee is paid. Applicant is entitled to claim small entity status when the application is filed. Thereafter, the application is allowed and the small entity issue fee is timely paid on October 1, 2002. On October 2, 2002, applicant signs a license agreement licensing rights in the invention to a large entity. On October 1, 2002, applicant had not transferred any rights in the invention, and was under no obligation to transfer any rights in the invention, to any other party who would not qualify for small entity status. The payment of the small entity issue fee would be proper as long as the applicant was under no obligation on October 1, 2002, to sign the license agreement with the large entity

entity. On October 1, 2002, applicant had not transferred any rights in the invention, and was under no obligation to transfer any rights in the invention, to any other party who would not qualify for small entity status. The payment of the small entity issue fee would be proper as long as the applicant was under no obligation on October 1, 2002, to sign the license agreement with the large entity.

Example 2: An applicant, who would otherwise qualify for small entity status, executes an agreement with a large entity. The agreement requires the applicant to assign a patent application to the large entity sixty days after the application is filed. Thereafter, the application is filed. Since the applicant is under an existing obligation to assign the application to a large entity, applicant would not be entitled to claim small entity status. Applicant would need to pay the large entity filing fee even though the actual assignment of the application to the large entity may not occur until after the date of payment of the filing fee.

Furthermore, § 1.27 is proposed to be amended to change the period at the end of paragraph (a)(2)(i) to “; and” to clarify that paragraphs (a)(2)(i) and (a)(2)(ii) are additive requirements and a party seeking to qualify as a small business must meet both requirements as to transfer of rights and Small Business Administration requirements.

Section 1.27(a)(2)(ii) is proposed to be amended to change “[m]eets the standards set forth in 13 CFR part 121” to “[m]eets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.”

s.”

Questions have also arisen as to whether a small business concern must have a place of business located in the United States, and operate primarily within the United States or make a significant contribution to the United States economy through the payment of taxes or use of American products, materials or labor (13 CFR 121.105) to be eligible to pay reduced patent fees under 35 U.S.C. 41(h). When the provisions of 35 U.S.C. 41(h) (Public Law 97-247, 96 Stat. 317 (1982)) were implemented in 1982, a suggestion that foreign concerns not be eligible to pay reduced patent fees under 35 U.S.C. 41(h) was considered and rejected because excluding foreign concerns would violate United States treaties in the patent area. See Definition of Small Business for Paying Reduced Patent Fees Under Title 35, United States Code, 47 FR 43272 (Sept. 30, 1982), 1023 Off. Gaz. Pat. Office 27 (Oct. 19, 1982) (final rule). Specifically, a provision that foreign concerns are not eligible to pay reduced patent fees under 35 U.S.C. 41(h) would violate Article 2 of the Paris Convention for the Protection of Industrial Property, which provides that nationals of any Paris Convention country shall, as regards the protection of industrial property, enjoy in all the other Paris Convention countries the advantages that their respective laws grant to nationals of that country. Therefore, a business concern which meets the small business requirements set forth in 13 CFR 121.801 through 121.805 and complies with applicable Office procedures is and continues to be eligible to pay reduced patent fees under 35 U.S.C. 41(h), even if the business concern is located in or operates primarily in a foreign country.

Section 1.47: Section 1.47(a) and (b) are proposed to be amended to refer to the petition fee set forth in § 1.17(g) for consistency with the change to § 1.17. See discussion of § 1.17.

Section 1.52: Section 1.52, paragraphs (b)(1)(ii), (b)(2)(ii), (d)(1) and (e), are proposed to be amended

35 U.S.C. 41(h), even if the business concern is located in or operates primarily in a foreign country.

Section 1.47: Section 1.47(a) and (b) are proposed to be amended to refer to the petition fee set forth in § 1.17(g) for consistency with the change to § 1.17. See discussion of § 1.17.

Section 1.52: Section 1.52, paragraphs (b)(1)(ii), (b)(2)(ii), (d)(1) and (e), are proposed to be amended.

Section 1.52, paragraphs (b)(1)(ii) and (d)(1) are proposed to be amended to require that the statement that the translation is accurate be signed by the individual who made the translation. The Office has received a number of inquiries as to who may sign the statement, and has decided that it is appropriate to include the requirement that the signature required is that of the translator into the rules of practice. See also the proposed amendments to §§ 1.55(a)(4), 1.69(b) and 1.78(a)(5)(iv). The requirement that the person who made the translation sign the statement that the translation is accurate is consistent with current § 3.26. Currently, anyone, including practitioners, who would have sufficient knowledge concerning the accuracy of the translation to comply with the averments of §§ 1.4(d)(2) and 10.18 may sign the accuracy statement regarding the translation. As a result, translations are being received by the Office accompanied by statements signed by practitioners stating that the translations are believed to be accurate “based on information and belief.” Such type of qualification by a party unrelated and several parties removed from the one doing the translation does not lend itself to confidence by the Office that care has been taken with the translation. Accordingly, the Office believes it to be appropriate to require the party doing the actual translation to make the statement of accuracy, particularly to ensure that the translator is covered by §§ 1.4(d)(2) and 10.18

n by a party unrelated and several parties removed from the one doing the translation does not lend itself to confidence by the Office that care has been taken with the translation. Accordingly, the Office believes it to be appropriate to require the party doing the actual translation to make the statement of accuracy, particularly to ensure that the translator is covered by §§ 1.4(d)(2) and 10.18.

Section 1.52(b)(2)(ii) is proposed to be revised to recommend that the font size of text be at least a font size of 12, which is approximately 0.166 inches or 0.422 cm. high. Section 1.52(b)(2)(ii) currently requires that the text be in a lettering style that is at least 0.08 inches high, which is the font size set forth in Patent Cooperation Treaty (PCT) Rule 11.9. A font size of only 0.08 inches leads to difficulty in capturing text with optical character recognition technology and may not be reproducible as required by § 1.52(a)(1)(v) (and PCT Rule 11.2(a)). A

Further, § 1.52 is proposed to be amended to allow greater flexibility in filing tables on compact disc, so that compact disc files may be used instead of paper where the total number of pages collectively occupied by all the tables in an application exceeds 100. Also, § 1.52 is proposed to be clarified to be consistent with tables submitted on paper as to what constitutes a page. Section 1.52 is proposed to be amended to recite that CD-R discs should be finalized so that they are closed to further writing.

Section 1.52(e)(1)(iii) is proposed to be amended to allow tables of any size on compact disc if the total number of pages of tables exceeds 100 pages. Since permitting the filing of tables on compact disc, the Office has received voluminous applications having large numbers of tables that were under 50 pages in length. Applicants have indicated that it would be less burdensome filing these small tables on compact disc

) is proposed to be amended to allow tables of any size on compact disc if the total number of pages of tables exceeds 100 pages. Since permitting the filing of tables on compact disc, the Office has received voluminous applications having large numbers of tables that were under 50 pages in length. Applicants have indicated that it would be less burdensome filing these small tables on compact disc. Accordingly, the rule is being liberalized while balancing the convenience of the Office and the public to view the document with the least burden imposed by dual media.

Section 1.52(e)(1)(iii) is also proposed to be amended to clarify what constitutes an electronic page so as to determine compliance with the 50- and 100-page requirement for submission of tables on compact disc.

Further clarification is proposed to be provided in § 1.52(e)(3)(i) as to what is a permanent compact disc. Recordable compact discs can be made for recording in a single recording session or in multiple recording sessions. To further assure the archival nature of the discs, the requirement that recordable discs be finalized so that they are closed to further recording is proposed to be added to § 1.52. Further, many older CD-ROM drives and audio CD players have compatibility problems with un-finalized CDs. This proposed change will ensure that the public and the Office will be able to use identical copies of any CDs filed with older CD-ROM drives.

The Office is actively investigating allowing the submission of other file formats, such as the Continuous Acquisition and Life Cycle Support (CALS) XML format, in addition to the current ASCII format. Before allowing the use of a file format, the Office must verify that applicants will have the tools to create files easily that are archivable and can be rendered to be viewable both by the Office users and later by the public when the application is published

other file formats, such as the Continuous Acquisition and Life Cycle Support (CALS) XML format, in addition to the current ASCII format. Before allowing the use of a file format, the Office must verify that applicants will have the tools to create files easily that are archivable and can be rendered to be viewable both by the Office users and later by the public when the application is published. Problems involving file size limitations, software display, and availability of adequate table creation software are delaying implementation at this time. The Office intends to broaden § 1.52 to allow at least CALS format tables when these problems are resolved. Technical specifications and a discussion of operability issues for the CALS table format may be found at the OASIS, i.e. , Organization for the Advancement of Structured Information Standards, Web site pages http://www.oasis-open.org/cover/tr9502.html and http://www.oasis-open.org/specs/a501.htm.

The Office is also reviewing the acceptability of DVD media. At present, there are several different types of recordable DVD media and it is unclear which if any will become a standard archivable format. Also, the Office is upgrading its capabilities to include the ability to read at least some types of DVD media. However, it does not appear that any DVD readers can be procured that will be able to read all of the different types of DVD media that are now in the marketplace. The Office is considering allowing submissions on at least some types of DVD media when it becomes clear which types of DVD media are recognized as of archivable quality and are compatible with Office hardware and software.

Section 1.53: Section 1.53(e)(2) is proposed to be amended to refer to the petition fee set forth in § 1.17(f) for consistency with the change to § 1.17. See discussion of § 1.17.

Section 1.55: Section 1.55(a)(1)(ii) is proposed to be amended to replace “an application that entered the national stage from an international application after compliance with 35 U.S.C

Office hardware and software.

Section 1.53: Section 1.53(e)(2) is proposed to be amended to refer to the petition fee set forth in § 1.17(f) for consistency with the change to § 1.17. See discussion of § 1.17.

Section 1.55: Section 1.55(a)(1)(ii) is proposed to be amended to replace “an application that entered the national stage from an international application after compliance with 35 U.S.C. 371” with “an international application designating the United States” (any application that enters the national stage from an international application after compliance with 35 U.S.C. 371 is also an “international application designating the United States”). While section 4508 of the American Inventors Protection Act of 1999 (AIPA) as originally enacted did not make the eighteen-month publication amendments to 35 U.S.C. 119 and 120 applicable to an international application unless and until it enters the national stage under 35 U.S.C. 371 ( see Public Law 106-113, 113 Stat. 1501, 1501A-566 through 1501A-567 (1999)), section 13205 of Public Law 107-273 amended section 4508 of the AIPA to make the eighteen-month publication amendments to 35 U.S.C. 119 and 120 in the AIPA also applicable during the international stage of an international application. See 116 Stat. 1758, 1903 (2002).

Section 1.55(a)(1) is also proposed to be amended to add a paragraph (a)(1)(iii) to provide that if an application claiming the benefit of a prior foreign application meets the twelve-month filing period requirement in 35 U.S.C. 119(a) only through one or more prior-filed nonprovisional applications or international applications designating the United States for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) and § 1.78(a), each such prior-filed application must also contain a claim for priority in compliance with § 1.55 to the prior foreign application. 35 U.S.C. 119(b)(1) provides that an application for patent is not entitled to priority under 35 U.S.C

ovisional applications or international applications designating the United States for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) and § 1.78(a), each such prior-filed application must also contain a claim for priority in compliance with § 1.55 to the prior foreign application. 35 U.S.C. 119(b)(1) provides that an application for patent is not entitled to priority under 35 U.S.C. 119(a)-(d) unless a claim is filed in the Office at such time during the pendency of the application as required by the Director. 35 U.S.C. 119(b)(2) also provides that the Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim, and that the Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under 35 U.S.C. 119(a)-(d). This time period requirement is to ensure that priority claims under 35 U.S.C. 119(a)-(d) are presented in sufficient time to permit publication of the application at eighteen months from the earliest claimed priority date under 35 U.S.C. 119(a)-(d). See 145 Cong. Rec. S14,708, S14,719 (1999) (daily ed. Nov. 17, 1999) (the Conference Report for H.R. 3194, 106th Cong., 1st. Sess. (1999), which resulted in Public Law 106-113, does not contain any discussion (other than the incorporated language) of S. 1948; however, a section-by-section analysis of S. 1948 was printed in the Congressional Record at the request of Senator Lott). In addition, priority claims must be presented in a timely manner in a PCT international application filed under 35 U.S.C. 363 to determine (among other things) the time limit for national stage entry

ot contain any discussion (other than the incorporated language) of S. 1948; however, a section-by-section analysis of S. 1948 was printed in the Congressional Record at the request of Senator Lott). In addition, priority claims must be presented in a timely manner in a PCT international application filed under 35 U.S.C. 363 to determine (among other things) the time limit for national stage entry. Therefore, the Office is proposing to amend § 1.55(a) to add a paragraph (a)(1)(iii) to make clear that the first-filed application in a chain of applications (as well as all intermediate applications) must contain a claim for priority in compliance with § 1.55 to a prior foreign application for a subsequent application to claim the benefit of the prior foreign application through the first-filed application (and all intermediate applications).

In In re Tangsrud, 184 USPQ 746 (Comm'r Pat. 1973), the Office held that a certified copy of a foreign priority document may be filed in a continuation application under § 1.60, rather than in its abandoned parent application, to meet the requirements in 35 U.S.C. 119 for the continuation application to claim the benefit of the foreign priority application (through its abandoned parent application). The language of Tangsrud, however, is broad enough to imply that neither the claim for priority nor the certified copy of the foreign priority document must be filed in the first-filed application for a subsequent application to claim the benefit of the foreign priority application through the first-filed application. This proposed change to § 1.55(a) would not affect the holding in Tangsrud that the certified copy of the foreign priority document may be filed in a continuing application, rather than in an abandoned first-filed application, provided that a claim for priority in compliance with § 1.55 to a prior foreign application is presented in the first-filed application

through the first-filed application. This proposed change to § 1.55(a) would not affect the holding in Tangsrud that the certified copy of the foreign priority document may be filed in a continuing application, rather than in an abandoned first-filed application, provided that a claim for priority in compliance with § 1.55 to a prior foreign application is presented in the first-filed application.

Section 1.55(a)(4) is proposed to be amended to require that the statement that the translation is accurate be signed by the individual who made the translation. The Office has received a number of inquiries as to who may sign the statement, and has decided that it is appropriate to include the requirement that the signature required is that of the translator into the rules of practice. See also the proposed amendments to §§ 1.52(b)(1)(ii), 1.52(d)(1), 1.69(b) and 1.78(a)(5)(iv). The requirement that the person who made the translation sign the statement that the translation is accurate is consistent with current § 3.26.

Section 1.55(c) is proposed to be amended to change “365(a)” to “365(a)-(b)” such that the procedures for acceptance of delayed priority claims under § 1.55(c) also apply to delayed priority claims under 35 U.S.C. 365(b) in international applications.

Section 1.57: Section 1.57 is proposed to be added to provide for incorporation by reference. Section 1.57(a) as proposed provides that, if all or a portion of the specification or drawings is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the date of receipt of the application, and the omitted portion of the specification or drawings is completely contained in the prior-filed application, the claim would be considered an incorporation by reference of the prior-filed application

a prior-filed foreign application, or § 1.78 for the benefit of a prior-filed provisional, nonprovisional, or international application, that was present on the date of receipt of the application, and the omitted portion of the specification or drawings is completely contained in the prior-filed application, the claim would be considered an incorporation by reference of the prior-filed application. Sections 1.57(b) through (f) as proposed treat incorporation by reference into an application of essential and nonessential material by: (1) Providing a definition of essential and nonessential material; (2) defining specific language that must be used to trigger an incorporation by reference; (3) codifying current practice as set forth in MPEP § 608.01(p) (Incorporation by Reference), updated to reflect the publication of applications; and (4) codifying treatment of improper incorporation by reference.

Currently, the mere reference to another application is not an incorporation of anything therein into the application containing such reference for the purpose of the disclosure under 35 U.S.C. 112, ¶ 1. See MPEP §§ 201.06(c) and 608.01(p), and In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). The proposed rule would allow all or a portion of the specification or drawings that is inadvertently omitted from an application containing a priority claim for a prior-filed foreign application, or a benefit claim for a prior-filed provisional, nonprovisional, or international application, to be added to the application by way of an amendment if the omitted portion of the specification or drawings is completely contained in the prior-filed application even though there is no explicit incorporation by reference of the prior-filed application. The phrase “completely contained” in § 1.57(a) requires that the material to be added to the application under § 1.57(a) must be expressly (as opposed to implicitly) disclosed in the prior application. Cf. PLT Rule 2(4)(iv)

the specification or drawings is completely contained in the prior-filed application even though there is no explicit incorporation by reference of the prior-filed application. The phrase “completely contained” in § 1.57(a) requires that the material to be added to the application under § 1.57(a) must be expressly (as opposed to implicitly) disclosed in the prior application. Cf. PLT Rule 2(4)(iv). The claim for priority or benefit would have to be present on the date of receipt of the application in order for it to be considered an incorporation by reference of the prior-filed application. The nonprovisional application claiming benefit could be a continuation, divisional, or continuation-in-part of the prior application for which benefit is claimed. The purpose of the proposed rule is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawings, or a portion thereof, is inadvertently omitted from an application.

If all or a portion of the specification or drawings is inadvertently omitted from an application and applicant wants to rely on the incorporation by reference provided by the proposed rule, the application would need to be amended to include the omitted portion of the specification or drawings within the time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114. In order for the omitted material to be included in the application, the application must be amended to include it. The incorporation by reference provided by the proposed rule requires an applicant to timely amend the application to include the omitted material in order for this material to be considered part of the disclosure

in no case later than the close of prosecution as defined by § 1.114. In order for the omitted material to be included in the application, the application must be amended to include it. The incorporation by reference provided by the proposed rule requires an applicant to timely amend the application to include the omitted material in order for this material to be considered part of the disclosure. The proposed rule gives the examiner the authority to require the applicant to supply a copy of the prior-filed application, to supply an English-language translation of any prior-filed application that is in a language other than English, and to identify where the omitted portion of the specification or drawings can be found in the prior-filed application.

Any amendment to an international application pursuant to the proposed rule would be effective only as to the United States. See proposed § 1.57(a)(2). In addition, no request to add the missing part of the description or the missing drawing in an international application designating the United States will be acted upon by the Office prior to the expiration of the applicable time limit under PCT Article 22(1) or (2), or Article 39(a).

If an application is not entitled to a filing date under § 1.53(b) or under PCT Article 11, the amendment must be by way of a petition accompanied by the fee set forth in § 1.17(f). See proposed § 1.57(a)(3).

The proposed rule is similar to the current practice under MPEP § 201.06(c) where there is an explicit incorporation by reference of the prior U.S. application contained in the specification or in the application transmittal letter of a continuation or divisional application filed under § 1.53(b). See MPEP § 201.06(c) (Incorporation by Reference). The proposed rule is also consistent with the PLT Article 5(6)(b) and Rule 2(3) and (4)

urrent practice under MPEP § 201.06(c) where there is an explicit incorporation by reference of the prior U.S. application contained in the specification or in the application transmittal letter of a continuation or divisional application filed under § 1.53(b). See MPEP § 201.06(c) (Incorporation by Reference). The proposed rule is also consistent with the PLT Article 5(6)(b) and Rule 2(3) and (4).

Of course, whether the proposed rule is adopted or not, applicants may continue to explicitly incorporate by reference a prior application or applications by including, in the body of the specification as filed, a statement that the prior application or applications is “hereby incorporated by reference.” Such an explicit incorporation by reference would not be limited to inadvertent omissions as in the proposed rule. Accordingly, applicants are encouraged to explicitly incorporate by reference a prior application or applications by including

Sometimes applicants intentionally omit material from a prior-filed application when filing an application claiming priority to, or benefit of, a prior-filed application. As discussed, the incorporation by reference would only permit material that was inadvertently omitted from the application to be added to the application if the omitted material is completely contained in the prior-filed application. Therefore, if the proposed rule were adopted, applicants would still be able to intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference. Applicants would be able to maintain their intent by simply not amending the application to include the intentionally omitted material. Thus, there should be no impact from the proposed rule in continuing applications where material from the prior application has been intentionally omitted

he priority or benefit claim without the material coming back in by virtue of the incorporation by reference. Applicants would be able to maintain their intent by simply not amending the application to include the intentionally omitted material. Thus, there should be no impact from the proposed rule in continuing applications where material from the prior application has been intentionally omitted. Therefore, the proposed rule has been drafted such that the application claiming benefit of a prior U.S. application could be a continuation-in-part application (as well as a continuation or divisional).

The proposed rule would not apply to any applications filed before the effective date of the rule. The proposed rule would be prospective only since to apply the rule retroactively would result in changing the expectations regarding incorporation by reference by applicants when the applications were filed.

The Office is interested in comments from the public regarding proposed § 1.57(a), whether there is support or opposition for the proposed rule, and whether there is any desire to limit the proposed rule to continuation or divisional applications and not have it apply to continuation-in-part applications.

Section 1.57(b) clarifies what is acceptable language that identifies an incorporation by reference for essential and non-essential matter as opposed to incorporation by reference of material in a prior application as is proposed in § 1.57(a). Applicants sometimes refer to other applications, patents, and publications, including patent application publications using language which does not clearly indicate whether what is being referred to is incorporated by reference or is just an informational reference. The Office is proposing to limit incorporation by reference (except as provided in § 1.57(a)) to instances only where the words “incorporated by reference” appear

other applications, patents, and publications, including patent application publications using language which does not clearly indicate whether what is being referred to is incorporated by reference or is just an informational reference. The Office is proposing to limit incorporation by reference (except as provided in § 1.57(a)) to instances only where the words “incorporated by reference” appear. The Office is attempting to bring greater clarity to the record and provide a bright line test as to where something being referred to is an incorporation by reference. The Office considered the alternative of making any mention of a document an automatic incorporation by reference of the document. Patent applications frequently contain a discussion of prior art documents when discussing the background of the invention, which prior art documents are not intended to be incorporated by reference. The necessity for § 1.57(b) is that applicants who fail to clearly link certain disclosures to means-plus-function language risk having their claims interpreted too narrowly or held unenforceable. Clarifying when material is incorporated by reference during examination by use of specific trigger language is considered an aid to applicants when they invoke 35 U.S.C. 112, ¶ 6. Applicants would be aided by avoiding narrowed claim construction as a result of a number of court decisions which would not look for equivalents outside of the application. See Atmel Corp. v. Info. Storage Devices Inc., 198 F.3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999), and B. Braun Medical Inc. v. Abbott Lab, 124 F.2d 1419, 43 USPQ2d 1896 (Fed. Cir. 1997). Treating these documents as automatically incorporated might result in unintended consequences such as when a means-plus-function claim is presented under 35 U.S.C. 112, ¶ 6

or equivalents outside of the application. See Atmel Corp. v. Info. Storage Devices Inc., 198 F.3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999), and B. Braun Medical Inc. v. Abbott Lab, 124 F.2d 1419, 43 USPQ2d 1896 (Fed. Cir. 1997). Treating these documents as automatically incorporated might result in unintended consequences such as when a means-plus-function claim is presented under 35 U.S.C. 112, ¶ 6.

Similarly, applicants would be aided by not having their claims found unpatentable by a mere reference to outside material unintentionally incorporating material that contained equivalents that would broaden their claims to encompass the prior art. Automatic incorporation by reference would create a trap for applicants and practitioners by creating unintentional equivalents for 35 U.S.C. 112, ¶ 6, language broadening claims to be unpatentable. Additionally, as claims are generally read in light of the specification, what is actually incorporated into the specification can affect the scope of the claims independent of 35 U.S.C. 112, ¶ 6.

Accordingly, comments are desired identifying alternative language to that proposed in paragraph (b) or why requiring this specific language would be a problem.

A patent application incorporating by reference other material must, as described in paragraph (b), include an identification of the referenced patent, application, or publication pursuant to § 1.98(b)(1) through (b)(5). The Office recommends that particular attention be directed to specific portions of referenced documents where the subject matter incorporated may be found if large amounts of material are incorporated. Guidelines for situations where applicant is permitted to fill in a number for Application No. __ left blank in the application as filed can be found in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971)

e recommends that particular attention be directed to specific portions of referenced documents where the subject matter incorporated may be found if large amounts of material are incorporated. Guidelines for situations where applicant is permitted to fill in a number for Application No. __ left blank in the application as filed can be found in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971). Commonly assigned abandoned applications less than 20 years old can be incorporated by reference to the same extent as copending applications; both types are open to the public upon the referencing application issuing as a patent. See MPEP § 103.

Section 1.57(c) codifies current practice in MPEP § 608.01(p) (Incorporation by Reference), except that § 1.57(c) as proposed is limited to U.S. patent or U.S. patent application publications ( i.e. , the Office proposes to eliminate the practice of incorporating by reference essential material in unpublished patents in which the issue fee for an application has been paid but the application has not yet issued as a patent). Delays in issuance or the withdrawal from issue of an allowed application put in doubt that an application incorporated by reference will be available to the public when a patent incorporating the other application issues. Similarly, this provision permitting only the incorporation of the publication document of an application is intended to preclude incorporation by reference of material found only in the redacted portion of a published patent application.

found only in the redacted portion of a published patent application.

Section 1.57(c) updates current practice to reflect publication of applications in two areas. Current practice permits holding in abeyance correction of material incorporated by reference from unpublished U.S. applications that have not issued as patents until allowance of the application making the incorporation by reference. Publication of the applications which contain an incorporation by reference means that the public will need access to the material incorporated by reference prior to an application being issued as a patent. Where the incorporation is to an unpublished application that has not issued as a patent, such application is not readily available. Therefore, holding the correction of an incorporation by reference in abeyance in this situation will materially impair the public's access to the invention that is disclosed by the published application that incorporates an unpublished application.

The Office considered but rejected including unpublished abandoned e.g. , unpublished incorporated by reference applications) available on the Internet. The Office may reconsider this position when its electronic file wrapper permits access to the text of unpublished abandoned applications on the Internet.

Section 1.57(c)(1) through (c)(3) defines essential material as those items required by 35 U.S.C. 112, ¶¶ 1, 2, and 6.

Section 1.57(d) defines the scope of incorporation by reference practice for nonessential subject matter. As discussed with respect to § 1.57(c), the Director has considerable discretion in determining what may or may not be incorporated by reference in a patent application. Through the Office's incorporation by reference policy, the Office ensures that reasonably complete disclosures are published as U.S. patents and U.S. application publications

by reference practice for nonessential subject matter. As discussed with respect to § 1.57(c), the Director has considerable discretion in determining what may or may not be incorporated by reference in a patent application. Through the Office's incorporation by reference policy, the Office ensures that reasonably complete disclosures are published as U.S. patents and U.S. application publications.

Section 1.57(e) is added so that it is clear that a copy of the incorporated by reference material may be required to be submitted to the Office even if the material is properly incorporated by reference. The examiner may require a copy of the incorporated material simply to review it and understand what is being incorporated or to put the description of the material in its proper context. Another instance where a copy of the reference may be required is where the material is being inserted by amendment into the body of the application to replace the incorporation by reference statement.

Section 1.57(f) addresses corrections of incorporation by reference. Section 1.57(f) provides that improper incorporation by reference statements may be corrected with a timely filed amendment. Nothing in § 1.57(f) authorizes the insertion of new matter into an application. The Office is concerned that improper incorporation by reference statements and late corrections thereof require the expenditure of unnecessary examination resources and slow the prosecution process. By treating improper incorporation by reference statements as not incorporating any material (until the incorporation by reference is corrected), the Office and applicants will avoid expending unnecessary resources and delays in prosecution occasioned by the many references to extraneous material that are often found in patent applications. Applicants know whether they want material incorporated by reference, and must timely correct any incorporation by reference errors

ating any material (until the incorporation by reference is corrected), the Office and applicants will avoid expending unnecessary resources and delays in prosecution occasioned by the many references to extraneous material that are often found in patent applications. Applicants know whether they want material incorporated by reference, and must timely correct any incorporation by reference errors.

Section 1.58: Section 1.58(a) is proposed to be amended to provide that a table not be included in both the drawings and in the body of the specification of an application. Section 1.58(b) is also proposed to be amended to clarify that correct visual alignment of rows and columns of chemical and mathematical formulae and tables is retained when the electronic file is rendered by opening and displaying the electronic file at the Office using a text viewer program. Section 1.58(c) is additionally proposed to be amended to recommend that the font size of text be at least 0.166 inches or 0.422 cm. and to eliminate a reference to elite type font.

Section 1.58(a) is proposed to be amended because applicants have been making voluminous applications even larger by including the same table as both a drawing figure and as text in the body of an application. Filing duplicate tables requires additional review by the Office to determine if the drawing table and the text table are duplicates and to identify differences if any differences exist. Moreover, the number of pages is effectively increased, causing increased scanning, storage and reproduction costs. In addition, the burden on the public to copy and review a published application or patent is also increased. See § 1.83 for a similar proposed change involving tables and sequence listings.

view a published application or patent is also increased. See § 1.83 for a similar proposed change involving tables and sequence listings.

Section 1.58(b) is proposed to be amended adding “visually” so that it is clear that the data in the electronic file are appropriately formatted so that the alignment of rows and columns is maintained in the table when the file is opened to view at the Office. The Office has found that some filers have only been providing markers to identify rows and columns in table data. When the table is viewed at the Office the markers do not cause the rows and columns of data to be visually aligned. Unless each entry in a table is surrounded with an appropriate number of spaces the visual spatial alignment of the table is not maintained: i.e. , the rows and cells are mis-aligned. A way to provide the proper alignment is to insert space characters in each cell so that the overall number of characters in each cell is the same, and to maintain a constant font width for all characters.

Many programs that are used to generate tables allow the user to provide additional spaces manually when typing data. Many of these programs also provide an automated way to pad the cells with space characters, and create an ASCII file with spatially aligned data. This feature is generally invoked by a command that is often called printing to a “formatted text” format or “prn” file. The program formats the table as it would appear on paper padding the cells with spaces to provide proper alignment of the cell entries.

A review of different versions of the same software product and of different software products showed no consistency in the menu language used for the formatting command noted above. With the constant change in software versions, the Office is not able to provide a list of all the menu variations. However, a person knowledgeable with the software used to create tabular data should be able to find the commands to invoke this feature in the software

product and of different software products showed no consistency in the menu language used for the formatting command noted above. With the constant change in software versions, the Office is not able to provide a list of all the menu variations. However, a person knowledgeable with the software used to create tabular data should be able to find the commands to invoke this feature in the software.

Section 1.58(c) is proposed to be amended for the same reason that § 1.52(b)(2)(ii) is proposed to be amended. Section 1.58(c) currently requires that the text be in a lettering style that is at least 0.08 inches high, which is the minimum font size set forth in Patent Cooperation Treaty (PCT) Rule 11.9. Text having a font size only 0.08 inches high is difficult to capture with optical character recognition technology and may not be reproducible as required by § 1.52(a)(1)(v) (and PCT Rule 11.2(a)). A font size of 12 (12/72 inch or 0.166 inch (0.422 cm.) high) is significantly more reproducible than a font size of 6 (6/72 inch or 0.08 inch (0.211 cm.) high). Accordingly, § 1.58(c) is proposed to be amended to indicate a preference for a larger font size. In addition, the reference to elite type is proposed to be deleted as it was inconsistent with the size given. Elite type is a typewriter type that runs 12 characters to the inch. Instead of referencing elite type, the rule is proposed to reference a font size of 6 which should be more meaningful to most patent applicants (most word processing software programs have an option to choose a font and a font size).

Section 1.59: Section 1.59 is proposed to be amended to refer to the petition fee set forth in § 1.17(g) for consistency with the change to § 1.17. See discussion of § 1.17.

refer to the petition fee set forth in § 1.17(g) for consistency with the change to § 1.17. See discussion of § 1.17.

Section 1.69: Section 1.69(b) is proposed to be amended by deleting the words “or approved” as unnecessary, and possibly leading to confusion and the mistaken assumption that the Office has a procedure for the approval of applicant generated forms, where no such procedure exists. See Changes to Implement the Patent Business Goals, Off. Gaz. Pat. Office 15, 20 (Nov. 2, 1999) (proposed rule) (declining to adopt a review service for applicant-created forms). In addition, paragraph (b) of § 1.69 is proposed to be amended to require that the statement that the translation is accurate be signed by the individual who made the translation. The Office has received a number of inquiries as to who may sign the statement required by the current rule and how the statement must be signed. The Office has decided to clarify that the signature required is that of the translator. See also the proposed amendments to §§ 1.52(b)(1)(ii), 1.52(d)(1), 1.55(a)(4) and 1.78(a)(5)(iv). The requirement that the person who made the translation sign the statement that the translation is accurate is consistent with current § 3.26.

Section 1.76: Section 1.76(a) is proposed to be amended to require that any application data sheet (ADS) contain the seven headings listed in § 1.76(b) and all of the appropriate data for each section heading. The proposed amendment would also require that the ADS be titled “Application Data Sheet.” Any label ( e.g. , the label “Given Name” in the “Applicant Information” heading) that does not contain any corresponding data will be interpreted by the Office to mean that there is no corresponding data for that label anywhere in the application

(b) and all of the appropriate data for each section heading. The proposed amendment would also require that the ADS be titled “Application Data Sheet.” Any label ( e.g. , the label “Given Name” in the “Applicant Information” heading) that does not contain any corresponding data will be interpreted by the Office to mean that there is no corresponding data for that label anywhere in the application. By requiring an ADS to contain all seven section headings, and any appropriate data for the sections, the accuracy of bibliographic data in patent applications will be enhanced and the need for corrected filing receipts related to Office errors will be reduced.

Section 1.76(c)(2) is proposed to be amended to require a supplemental application data sheet to be labeled “Supplemental Application Data Sheet” and to also contain all of the headings listed in § 1.76(b) with any appropriate data for each heading, rather than only identifying the information that is being changed (added, deleted, or modified) in the supplemental ADS. Requiring a supplemental ADS to contain all of the information from the ADS with the changes indicated is consistent with the ADS guide posted on the Office's Internet Web site at: http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html. A supplemental ADS containing only new or changed information is likely to confuse the record, create unnecessary work for the Office, and would not comply with § 1.76 if amended as proposed

ain all of the information from the ADS with the changes indicated is consistent with the ADS guide posted on the Office's Internet Web site at: http://www.uspto.gov/web/offices/pac/dapp/sir/doc/patappde.html. A supplemental ADS containing only new or changed information is likely to confuse the record, create unnecessary work for the Office, and would not comply with § 1.76 if amended as proposed. When submitting an ADS after the initial filing of the application to correct, modify, or augment the original application data included in an ADS, the following applies: (1) The supplemental application data sheet must be labeled “Supplemental Application Data Sheet”; (2) the “Supplemental Application Data Sheet” is a full replacement copy of the original application data sheet, with each of the seven section headings, and with any appropriate data for the section headings; and (3) the “Supplemental Application Data Sheet” must be submitted with any changes or additions underlined (for deletions without replacement data, use strike-through or brackets).

When submitting an ADS to correct, modify, or augment application data ( see § 1.76(d)), when an ADS has not been previously filed, the first-filed ADS is not considered a supplemental ADS even if such is filed subsequent to the initial filing of the oath or declaration. When submitting such an ADS: (1) The application data sheet must be labeled “Application Data Sheet”; and (2) a complete application data sheet including all appropriate information for each heading must be submitted.

Section 1.78: Section 1.78(a)(1) is proposed to be amended to delete an unnecessary alternate condition to permit a claim for the benefit of a prior-filed application. Sections 1.78(a)(2) and (a)(5) are proposed to be amended to permit the required reference to the prior application(s) to be in multiple sentences at the beginning of the specification, rather than being limited to the first sentence of the specification

1.78(a)(1) is proposed to be amended to delete an unnecessary alternate condition to permit a claim for the benefit of a prior-filed application. Sections 1.78(a)(2) and (a)(5) are proposed to be amended to permit the required reference to the prior application(s) to be in multiple sentences at the beginning of the specification, rather than being limited to the first sentence of the specification.

Section 1.78(a)(1) sets forth the conditions under which a nonprovisional application may claim the benefit of one or more prior-filed copending U.S. nonprovisional applications or international applications designating the United States of America. Where the prior-filed application is a nonprovisional application (filed under 35 U.S.C. 111(a)), one of the conditions under § 1.78(a)(1) is met when the prior-filed application satisfied any one of paragraphs (ii), (iii) or (iv) of § 1.78(a)(1). To satisfy paragraph (ii), the prior-filed application must be “[c]omplete as set forth in § 1.51(b).” To satisfy paragraph (iii), the prior-filed application must be “[e]ntitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and include the basic filing fee set forth in § 1.16.” Considering that paragraph (iii) is less restrictive than paragraph (ii), it is proposed to delete paragraph (ii) (and redesignate paragraphs (iii) and (iv) as paragraphs (ii) and (iii), respectively) as it is unnecessary because any prior-filed application that would satisfy paragraph (ii) would also satisfy paragraph (iii).

Sections 1.78(a)(2)(iii) and (a)(5)(iii) are proposed to be amended to change the word “sentence” to “sentence(s)”. The proposed change would permit the required reference to the prior application(s) to be in more than one sentence at the beginning of the specification. In some situations, it would be easier and clearer to set forth the relationship between prior applications if more than one sentence were permitted

(iii) and (a)(5)(iii) are proposed to be amended to change the word “sentence” to “sentence(s)”. The proposed change would permit the required reference to the prior application(s) to be in more than one sentence at the beginning of the specification. In some situations, it would be easier and clearer to set forth the relationship between prior applications if more than one sentence were permitted. For example, where there is a provisional application and multiple intermediate nonprovisional applications, the required identification in the latest nonprovisional application as to which intermediate nonprovisional application(s) claims benefit to the provisional application ( i.e. , is within one year of the provisional application's filing date), could be set forth in a clearer manner using multiple sentences.

Section 1.78(a)(5)(iv) is proposed to be amended to require that the statement that the translation is accurate be signed by the individual who made the translation. The Office has received a number of inquiries as to who may sign the statement, and has decided that it is appropriate to include the requirement that the signature required is that of the translator into the rules of practice. See also the proposed amendments to §§ 1.52(b)(1)(ii) and (d)(1), 1.55(a)(4) and 1.69(b). The requirement that the person who made the translation sign the statement that the translation is accurate is consistent with current § 3.26.

Section 1.78(c) is proposed to be amended to clarify that the prior art exception under 35 U.S.C

ture required is that of the translator into the rules of practice. See also the proposed amendments to §§ 1.52(b)(1)(ii) and (d)(1), 1.55(a)(4) and 1.69(b). The requirement that the person who made the translation sign the statement that the translation is accurate is consistent with current § 3.26.

Section 1.78(c) is proposed to be amended to clarify that the prior art exception under 35 U.S.C. 103(c) does not apply to double patenting rejections by the addition of the last sentence, which states “Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person, at the time the later invention was made, the conflicting claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.” Therefore, § 1.78(c) emphasizes that double patenting rejections should still be made, when appropriate, even if a reference is disqualified from being used in a rejection under 35 U.S.C. 103(a) via the prior art exclusion under 35 U.S.C. 103(c). This clarification codifies patent policy regarding double patenting rejections and the prior art exclusion under 35 U.S.C. 103(c) as set forth in the notice Guidelines Concerning the Implementation of Changes to 35 U.S.C. 102(g) and 103(c) and the Interpretation of the Term “Original Application” in 1233 Off. Gaz. Pat. Office 54 (Apr. 11, 2000)) and MPEP § 706.02(l)(1). Additionally, the first sentence of § 1.78(c) is proposed to be amended by changing the word “party” to “person” in order to use terminology consistent with 35 U.S.C. 103(c).

th 35 U.S.C. 103(c).

Section 1.83 : Section 1.83(a) is proposed to be amended to provide that tables and sequence listings that are in the specification are not permitted to also be included in the drawings. Applicants should not be obliged to include tables or the sequence listing in the drawings due to the current requirement of § 1.83(a) that all claimed features must be shown in the drawings. Under the proposed amendment, if the specification includes a sequence listing or a table, such a sequence listing or table would not be permitted to be repeated in the drawings.

See § 1.58(a) for a similar proposed change to require that tables be included in only one of the drawings and the specification.

Section 1.84 : Section 1.84 is proposed to be amended by revising § 1.84(a)(2)(iii) to remove the requirement for submission of a black and white copy of any color drawings or photographs. Section 1.84(a)(2)(iv) is proposed to be amended to become (a)(2)(iii). Section 1.84(c) is proposed to be amended to clarify that identification (labeling) of the drawings is recommended, but not required, and to change the recommended location of any identification of the drawings.

Section 1.84(a)(2) is proposed to be amended to remove the requirement for a black and white copy of a color drawing or photograph. This requirement has already been waived. See Interim Waiver of Parts of 37 CFR 1.84 and 1.165, and Delay in the Enforcement of the Change in 37 CFR 1.84(e) to No Longer Permit Mounting of Photographs, 1246 Off. Gaz. Pat. Office 106 (May 22, 2001).

Section 1.84(c) is proposed to be amended to remove the requirement that the identification of drawings must be placed on the front of each sheet of drawing, if the information is provided. The Office prefers that the identification of drawings be placed on the front of each sheet of drawing so that photocopies and scanned images of the drawings will be properly identified with the application. The Office has new scanners that will endorse in the top margin starting 3.5 inch from the right edge and ending 1 inch from the right edge of the paper. Therefore, applicants are strongly encouraged to place the information on the front of each sheet, to the left of the center on the top margin so that the identification does not overlap the endorsement, and so that the identification will be included in any photocopies of the drawings. The Office, however, recognizes that some applications have long titles or identification that could not be placed completely on the front within the top margin. In such a situation, the identification of drawings may be placed on the back of each sheet (understanding that the backs of drawing sheets will not be scanned), but placing part of the identification ( e.g. , the application number and the first inventor's name) on the front is recommended. If the identification of drawings is placed on the front of each sheet, the identification must be placed to the left of center within the top margin.

Section 1.91 : Section 1.91 is proposed to be amended to add a paragraph (c), which provides that a model or exhibit must be accompanied by photographs that show multiple views of the material features of the model or exhibit and that substantially conform to the requirements of § 1.84. Material features are considered to be those features which represent that portion(s) of the model or exhibit forming the basis for which the model or exhibit has been submitted

ragraph (c), which provides that a model or exhibit must be accompanied by photographs that show multiple views of the material features of the model or exhibit and that substantially conform to the requirements of § 1.84. Material features are considered to be those features which represent that portion(s) of the model or exhibit forming the basis for which the model or exhibit has been submitted. Since the Office generally returns or otherwise disposes of models or exhibits when they are no longer necessary for the conduct of business before the Office (§ 1.94), such photographs are necessary for the file of the application or proceeding to contain an adequate record of the model or exhibit submitted to the Office. Section 1.91(c) would also provide that this requirement does not apply if the model or exhibit substantially conforms to the requirements of § 1.52 or § 1.84, since a model or exhibit that substantially conforms to the requirements of § 1.52 or § 1.84 can itself be retained in the file wrapper of the application or proceeding.

In applications where the exhibit is not intended to display the medium of submission ( e.g. , video tapes, DVDs, and compact discs) but the content of the submission, the requirement that the photographs be of the substantive content is included in this paragraph. Video tapes, DVDs, and compact discs are usually submitted with movies or multimedia images. The requirement that the photographs submitted should show the material features that were being exhibited is intended to require that the photograph be that of the content of the material, not a photograph of the medium of submission. Hence, if video or multimedia submission is contained on a tape or disc, the corresponding photograph should be a still image single frame of a movie, and not a submission of a photograph of a video cassette, DVD disc or compact disc.

A video or DVD is not the type of model or exhibit that would substantially conform to the requirements of §§ 1.52 or 1.84

photograph of the medium of submission. Hence, if video or multimedia submission is contained on a tape or disc, the corresponding photograph should be a still image single frame of a movie, and not a submission of a photograph of a video cassette, DVD disc or compact disc.

A video or DVD is not the type of model or exhibit that would substantially conform to the requirements of §§ 1.52 or 1.84. The Office does not intend to store bulky items, such as videos, particularly as the Office is moving toward an Image File Wrapper. See Changes To Implement Electronic Maintenance of Official Patent Application Records, 68 FR 38611 (June 30, 2003). Accordingly, where a video or DVD or similar item is submitted as a model or exhibit, the requirement of § 1.91(c) for supplying photographs of what is depicted in the video or DVD, pursuant to § 1.84, would need to be met.

The Office is interested in comments as to whether the requirement for supplying photographs, particularly for a video or DVD, is overly broad and an adequate description could be presented by some other type of description, such as a written statement.

Section 1.94 : Section 1.94 is proposed to be amended to be divided into paragraphs (a) through (c). Paragraph (a) provides that once notification is sent to applicant, arrangements must be made by applicant for the return of the model, exhibit, or specimen at applicant's expense, in response to such notification. Where the model, exhibit or specimen is a perishable, it will be presumed that the Office has permission to dispose of the item without notice to applicant, unless applicant notifies the Office upon submission of the item that a return is desired and arrangements are promptly made for its return upon notification by the Office.

Paragraph (b) provides that applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application

dispose of the item without notice to applicant, unless applicant notifies the Office upon submission of the item that a return is desired and arrangements are promptly made for its return upon notification by the Office.

Paragraph (b) provides that applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application. Section 1.94 would also provide that its provisions do not apply: (1) If the model or exhibit substantially conforms to the requirements of §1.52 or § 1.84, since a model or exhibit that substantially conforms to the requirements of § 1.52 or § 1.84 can itself be retained in the file wrapper of the application or proceeding; (2) where a model, exhibit, or specimen has been described by photographs that conform to § 1.84, or (3) where the model, exhibit, or specimen is a perishable.

Paragraph (c) provides that the notification to applicant will set a period of time within which applicant must make arrangements for a return of a model, exhibit, or specimen, with

Section 1.98 : Section 1.98(a) is proposed to be amended by revising paragraph (a)(1) to require a specified format/identification for each page of an IDS, and that U.S. patents and U.S. patent application publications be listed in a section separately from citations of other documents. Section 1.98(a)(1) is specifically proposed to be amended to require that U.S. patents and U.S. patent application publications must be listed separately from the citations of other documents. This will permit the Office to optical character recognition (OCR) scan the U.S. patent numbers and the U.S. patent application publication numbers such that the document could be made available electronically to the examiner to facilitate searching and retrieval of U.S. patents and U.S. patent application publications on the Office's search databases

arately from the citations of other documents. This will permit the Office to optical character recognition (OCR) scan the U.S. patent numbers and the U.S. patent application publication numbers such that the document could be made available electronically to the examiner to facilitate searching and retrieval of U.S. patents and U.S. patent application publications on the Office's search databases. Applicants will comply with this proposed requirement if they use forms PTO/SB/08A and 08B (or the more commonly used PTO-1449), which provide a separate section for listing U.S. patents and U.S. patent application publications. Applicants who do not use these forms for submitting an IDS must make sure that the U.S. patents and U.S. patent application publications are listed in a separate section from citations of other documents.

Current § 1.98(a)(1) does not require the use of a form such as the PTO/SB/08A and 08B because the Office wishes to provide applicants the flexibility to use other types of lists. The Office, however, experiences problems associated with lists that do not properly identify the application in which the IDS is being submitted: e.g. , when applicants submit a list that includes copies of PTO-1449 or PTO-892 forms from other applications. Even though the IDS transmittal letter has the proper application number, each page of the list does not include the proper application number, but instead has the application numbers of the other applications. Should the pages of the list become separated, the Office cannot associate the pages with the proper application. Therefore, the rule is proposed to be amended to require that each page of the list must clearly identify the application number of the application in which the IDS is being submitted

lude the proper application number, but instead has the application numbers of the other applications. Should the pages of the list become separated, the Office cannot associate the pages with the proper application. Therefore, the rule is proposed to be amended to require that each page of the list must clearly identify the application number of the application in which the IDS is being submitted.

Section 1.98(a)(1) is also proposed to be amended to require that a list must include a column that provides a space next to each document listed in order to permit the examiner to enter his or her initials next to the citations of the documents that have been considered by the examiner. This provides a notification to the applicant and a clear record in the application to indicate which documents have been considered by the examiner for the application. Applicants are strongly discouraged from submitting a list that includes copies of PTO/SB/08 (PTO-1449) or PTO-892 forms from other applications. A completed PTO/SB/08 or PTO-1449 form from another application may already have initials of another examiner and the application number of another application. The burden is then on the Office to correct the incorrect information. Furthermore, when the spaces provided on the form have initials of another examiner, there are no spaces available next to the documents listed for the examiner of the subsequent application to provide his or her initials.

Section 1.98(a)(1) is also proposed to be amended to require that each page of the list includes a heading that clearly indicates that the list is an information disclosure statement. Since the Office treats an IDS submitted by the applicant differently than information submitted by a third-party ( e.g. , the Office may discard any non-compliant third-party submission under § 1.99), a heading on each page of the list to indicate that the list is an IDS would promote proper treatment of the IDS submitted by the applicant and reduce handling errors

formation disclosure statement. Since the Office treats an IDS submitted by the applicant differently than information submitted by a third-party ( e.g. , the Office may discard any non-compliant third-party submission under § 1.99), a heading on each page of the list to indicate that the list is an IDS would promote proper treatment of the IDS submitted by the applicant and reduce handling errors.

Section 1.98(e) is proposed to be amended to provide that the requirement in § 1.98(a)(2) for a copy of the U.S. patents or U.S. patent application publications listed in an information disclosure statement does not apply: (1) In any national patent application filed after June 30, 2003; (2) in any international application that has entered the national stage under 35 U.S.C. 371 and § 1.495 after June 30, 2003; or (3) in any information disclosure statement submitted in compliance with the Office's electronic filing system. See Information Disclosure Statements May Be Filed Without Copies of U.S. Patents and Published Applications in Patent Applications filed after June 30, 2003 , 1273 Off. Gaz. Pat. Office 55 (Aug. 5, 2003).

Section 1.102 : Section 1.102(c) would be amended to provide by rule for a petition to make an application special without a fee when the application relates to a counter-terrorism invention. The Office currently accords “special” status to patent applications relating to counter-terrorism technology so long as the fee under § 1.17(h) is included with the petition. Amending § 1.102(c) to cover applications relating to counter-terrorism inventions will eliminate the requirement for a fee.

rement for a fee.

Under current § 1.102(c), there are two types of inventions that qualify as a basis for making an application special without a fee (other than on the basis of an applicant's age or health), namely: (1) Inventions that will materially enhance the quality of the environment; and (2) inventions that will materially contribute to the development or conservation of energy resources. It is proposed that inventions that will materially contribute to countering terrorism be added as a third type of invention for making an application special without a fee under § 1.102(c). As set forth in MPEP § 708.02, XI (Inventions For Countering Terrorism), the types of technology for countering terrorism include, but are not limited to, systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems. This is appropriate considering that such inventions may help maintain homeland security. In view of this proposed amendment, the basis for making applications relating to counter-terrorism technology special would be transferred from § 1.102(d) to § 1.102(c).

Pursuant to the proposed amendment, § 1.102(c) sets forth two bases for making an application special: (1) Applicant's age or health; or (2) that the invention is one of the three qualifying types of inventions ( i.e. , the invention is one that will materially enhance the quality of the environment, materially contribute to the development or conservation of energy resources, or materially contribute to countering terrorism). In view of the divergent subject matter covered by § 1.102(c)(1) and (c)(2), a petition under § 1.102(c)(1) or (c)(2) must identify the particular basis under which applicant is petitioning for special status so that the Office can determine how to evaluate an application's entitlement to special status

lopment or conservation of energy resources, or materially contribute to countering terrorism). In view of the divergent subject matter covered by § 1.102(c)(1) and (c)(2), a petition under § 1.102(c)(1) or (c)(2) must identify the particular basis under which applicant is petitioning for special status so that the Office can determine how to evaluate an application's entitlement to special status. In addition, MPEP § 708.02 indicates that a “petition for special status should be accompanied by a statement explaining how the invention contributes to countering terrorism” as defined in MPEP § 708.02, XI, Inventions For Countering Terrorism. See §§ 1.56 and 10.18.

Section 1.103 : Section 1.103(a) is proposed to be amended to refer to the petition fee set forth in § 1.17(g) for consistency with the change to § 1.17. See discussion of § 1.17.

Section 1.105: Section 1.105(a) is proposed to be amended to redesignate paragraph (a)(3) as paragraph (a)(4) and add new paragraphs (a)(1)(viii) and (a)(3). Sections 1.105(a)(1)(viii) and (a)(3) contain additional examples of information requirements and set forth exemplary formats to portray the use of § 1.105 to seek stipulations, for example, as to the knowledge of those of ordinary skill in the art, and to require responses to interrogatories, for example, as to applicant's understanding of the knowledge of persons of ordinary skill in the relevant art.

This proposal sets forth a practice for soliciting applicant's knowledge, such as stipulations to clarify the record by removing uncontroverted assertions from further consideration, or for soliciting the applicant's response to specific questions based on the applicant's knowledge to resolve outstanding issues. The requirement for information provisions of § 1.105(a)(1) contain several examples, not by any means exhaustive, of the types of information that may be required from applicants under § 1.105

he record by removing uncontroverted assertions from further consideration, or for soliciting the applicant's response to specific questions based on the applicant's knowledge to resolve outstanding issues. The requirement for information provisions of § 1.105(a)(1) contain several examples, not by any means exhaustive, of the types of information that may be required from applicants under § 1.105. The Office is proposing to add the following examples to § 1.105(a)(1): Technical information known to applicant concerning the interpretation of the related art, the disclosure, the claimed subject matter, other information pertinent to patentability, or the accuracy of the examiner's stated interpretation of such items. The format of such a requirement would differ markedly from the format of the existing examples, which generally require specific documents. New paragraph (a)(3) provides examples of formats for requirements for information: (1) a requirement for documents; (2) interrogatories in the form of specific questions seeking applicant's knowledge; or (3) stipulations in the form of statements with which the applicant may agree or disagree. The existing provisions of paragraph (a)(3) would be included in paragraph (a)(4), which would also recognize that information in the form of opinion might not be held, and permit a reply to a requirement for opinion to be considered complete where it is stated that an opinion is not held.

35 U.S.C. 101, 102, 103 and 112 require that claimed subject matter be among those eligible for patentability, provide utility that is substantial, credible and specific, be supported by a written disclosure that teaches how to make and use the invention and be definite in characterization, and be novel and non-obvious to a person of ordinary skill in the art. Evidentiary issues surrounding these patentability conditions frequently arise that require applicant reply for resolution

igible for patentability, provide utility that is substantial, credible and specific, be supported by a written disclosure that teaches how to make and use the invention and be definite in characterization, and be novel and non-obvious to a person of ordinary skill in the art. Evidentiary issues surrounding these patentability conditions frequently arise that require applicant reply for resolution.

In particular, the knowledge and skill of a person of ordinary skill in the art is highly pertinent to the resultant utility, to the degree of disclosure required, and to the degree to which prior art reads on claimed subject matter in view of inherent aspects and standard practices and knowledge in the art. However, evidence of what the indicia would be for that knowledge and skill may be highly burdensome to collect, and may be particularly wasteful of examiner resources for certain elementary issues, such as in common matters of scientific and engineering practice.

The Office is considering the use of stipulations and interrogatories relating to elements of the prior art, recognitions of problems to be solved, and rationales for combinations.

Applicant and the examiner may agree on the knowledge exhibited by persons of ordinary skill in the art, and this may be documented by formal stipulation. Alternatively, the examiner may articulate specific questions for applicant response in the form of an interrogatory designed to elicit the aspects of the knowledge of persons of ordinary skill in the art pertinent to analyzing patentability arising from the art of record

may agree on the knowledge exhibited by persons of ordinary skill in the art, and this may be documented by formal stipulation. Alternatively, the examiner may articulate specific questions for applicant response in the form of an interrogatory designed to elicit the aspects of the knowledge of persons of ordinary skill in the art pertinent to analyzing patentability arising from the art of record.

Additional instances where stipulations and interrogatories may be used to elicit information reasonably necessary to examination include eliciting: (1) Applicant's interpretation of the distinctions among claims; (2) applicant's interpretation of the common technical features shared among all claims, or admission that certain groups of claims do not share any common technical features; (3) applicant's intention for the scope of structural and procedural support found in the disclosure for means or step plus function claims; (4) applicant's interpretation for precisely which portions of the disclosure provide the written description and enablement support for each claim element; (5) applicant's interpretation for the intended breadth of claim terms, particularly where those terms are not used per se in the specification; (6) applicant's interpretation of which portions of each claim correspond to the admitted prior art in the specification; (7) applicant's interpretation of the specific utility provided by the claimed subject matter; and (8) applicant's identification of new subject matter in a continuation-in-part.

All requirements for information under § 1.105 must be reasonably necessary to treating a matter in an application. As such, requirements for information must be specific in the articulation of what is required and must exhibit a reasonable likelihood of being readily fulfilled by the applicant. The Office's policy of compact prosecution requires that both examiners and applicants provide the information necessary to raise and resolve the issues related to patentability expeditiously

a matter in an application. As such, requirements for information must be specific in the articulation of what is required and must exhibit a reasonable likelihood of being readily fulfilled by the applicant. The Office's policy of compact prosecution requires that both examiners and applicants provide the information necessary to raise and resolve the issues related to patentability expeditiously. Where information highly pertinent to patentability determination may be required in a form that is readily responded to, such as with solicitations of stipulations or interrogatories directly related to the issues on the record, such a requirement is consistent with the policies of compact prosecution and reasonable necessity for making requirements.

Section 1.111: Section 1.111(a)(2) is proposed to be amended to provide that a supplemental reply to a non-final Office action will not be entered as a matter of right, with the exception that a supplemental reply will be entered if it is filed within the period when action by the Office is suspended under § 1.103(a) through (c) (suspensions requested by the applicant). The proposed amendment to § 1.111(a)(2) would also provide that the Office may enter a supplemental reply that is filed before the expiration of the statutory period ( i.e. , within six months from the mailing date of the non-final Office action) if the supplemental reply is clearly limited to: (1) Cancellation of a claim(s); (2) adoption of an examiner suggestion(s); or (3) placement of the application in condition for allowance. The proposed amendment to § 1.111(a)(2) would replace the current procedures for disapproving a second or subsequent supplemental reply set forth in § 1.111(a)(2).

The proposed amendment to § 1.111(a)(2) would encourage applicants to utilize the Office's resources more efficiently, by filing a complete first reply to a non-final Office action, thus assisting the Office in reducing pendency

ance. The proposed amendment to § 1.111(a)(2) would replace the current procedures for disapproving a second or subsequent supplemental reply set forth in § 1.111(a)(2).

After filing a reply to a non-final Office action, applicants would not be able in a supplemental reply, as a matter of right, to: (1) Further amend any claims; (2) add new claims; (3) reinstate previously canceled claims; (4) present evidence; or (5) submit arguments. The Office may enter any supplemental reply that is filed before the expiration of the statutory period ( i.e. , within six months from the mailing date of the non-final Office action) if the supplemental reply is limited to: (1) Cancellation of a claim(s); (2) adoption of an examiner suggestion(s); or (3) placement of the application in condition for allowance. Any supplemental reply filed after the expiration of the statutory period would not be entered even if the supplemental reply meets one of the conditions since such reply would not be evaluated for entry. IDSs, or supplemental IDSs are not considered replies except when they are submitted pursuant to a requirement under § 1.105. IDSs filed with a non-compliant supplemental reply would be considered separately according to the requirements of §§ 1.97 and 1.98.

The proposed amendment to § 1.111(a)(2) would replace the procedures currently set forth in § 1.111(a)(2). The current disapproval procedures were meant to provide the Office with latitude to refuse entry of supplemental replies that unduly interfere with the preparation of an Office action. See Changes to Implement the Patent Business Goals , 65 FR 54604 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77 (Sept. 19, 2000)

t to § 1.111(a)(2) would replace the procedures currently set forth in § 1.111(a)(2). The current disapproval procedures were meant to provide the Office with latitude to refuse entry of supplemental replies that unduly interfere with the preparation of an Office action. See Changes to Implement the Patent Business Goals , 65 FR 54604 (Sept. 8, 2000), 1238 Off. Gaz. Pat. Office 77 (Sept. 19, 2000). The disapproval procedures, however, did not address the pendency problems associated with first supplemental replies. The Office receives a significantly larger number of first supplemental replies than second (or subsequent) supplemental replies. Furthermore, the procedures for disapproving a second (or subsequent) supplemental reply are too time consuming for examiners and Office technical support staff. The proposed amendment to § 1.111(a)(2) would provide a single simplified procedure for handling all supplemental replies, which would reduce processing delays and save Office resources.

If a supplemental reply is denied entry, such reply would be assigned a paper number and placed in the application file, with no further action taken. To have any of the arguments or amendments contained in an unentered supplemental reply considered by the examiner, applicants may request the entry of the supplemental reply, or resubmit the contents of supplemental reply, in a proper reply to the next Office action, if the next Office action is a non-final action. If the next Office action is a final rejection or a notice of allowance, applicants may file a request for continued examination (RCE) in compliance with § 1.114 ( i.e. , a request accompanied by a submission and a fee) and request the entry of the supplemental reply, or resubmit the contents of such reply, in the RCE submission, to have such reply considered by the examiner. If an RCE is filed after a final Office action, to have a previously filed supplemental reply considered, the RCE must be accompanied by a reply to the outstanding Office action. See § 1.114(c)

request accompanied by a submission and a fee) and request the entry of the supplemental reply, or resubmit the contents of such reply, in the RCE submission, to have such reply considered by the examiner. If an RCE is filed after a final Office action, to have a previously filed supplemental reply considered, the RCE must be accompanied by a reply to the outstanding Office action. See § 1.114(c).

If an applicant cannot file a first reply to a non-final Office action that is to his or her satisfaction ( e.g. , an affidavit is being prepared under § 1.131), applicant may consider filing a continuing application, such as a continuation application under § 1.53(b) (as an RCE would not be permitted because the Office action is non-final, see § 1.114(b)).

A supplemental reply would be entered if it is filed within the period during which action by the Office is suspended under § 1.103(a) through (c). If a supplemental reply is filed during a suspension of action that was granted by the Office for a petition, with a showing of good and sufficient cause for suspension, the supplemental reply would be entered. For example, if test data is required to overcome a rejection under 35 U.S.C. 103(a) and the applicant needs more time to conduct an experiment and collect the test data, the applicant may file a first reply to the Office action (as the Office will not grant a suspension of action if there is an outstanding Office action awaiting a reply by the applicant) and a petition for suspension of action with a showing of good cause under § 1.103(a). If the suspension is granted by the Office, applicant may submit the test data in a supplemental reply during the suspension period. In addition, if an applicant is filing an RCE after a final rejection accompanied by a reply to the final Office action and needs more time to prepare a supplemental reply ( e.g. , an affidavit), applicant may consider filing a request for suspension of action under § 1.103(c) with the RCE

anted by the Office, applicant may submit the te

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