MPEP R IP 751 S C UK Consolidated Rules

User Manual: IP 751 S C UK

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MPEP TOC
PART 1 — RULES OF PRACTICE IN PATENT CASES
PART 3 — ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
PART 4 — COMPLAINTS REGARDING INVENTION PROMOTERS
PART 5 — SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES
Index I — RULES RELATING TO PATENTS
PART 10 — [Reserved]
PART 11 — REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE
Index II — RULES RELATING TO REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE
PART 41 — PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
PART 42 — TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
PART 90 — JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD DECISIONS
PART 102 — DISCLOSURE OF GOVERNMENT INFORMATION
PART 104 — LEGAL PROCESSES
PART 150 — REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)

Appendix R Consolidated Patent Rules - January 2018 Update

Title 37 - Code of Federal Regulations

Patents, Trademarks, and Copyrights

[Editor Note: Current as of January 16, 2018. The Federal Register is the authoritative source and should be

consulted if a need arises to verify the authenticity of the language reproduced below. This Consolidated Rules

document incorporates the following rule revisions that became effective subsequent to the publication of

MPEP Revision 08.2017 (which was updated as of August 2017):

(1) Rule on Attorney-Client Privilege for Trials Before the Patent Trial and Appeal Board, 82 FR 51570 (November

7, 2017); and

(2) Setting and Adjusting Patent Fees During Fiscal Year 2017, 82 FR 52780 (November 14, 2017).]

CHAPTER I—UNITED STATES PATENT

AND TRADEMARK OFFICE, DEPARTMENT

OF COMMERCE

SUBCHAPTER A – GENERAL

PATENTS

PART 1 RULES OF PRACTICE IN PATENT CASES

PART 3 ASSIGNMENT, RECORDING AND RIGHTS OF

ASSIGNEE

PART 4 COMPLAINTS REGARDING INVENTION

PROMOTERS

PART 5 SECRECY OF CERTAIN INVENTIONS AND

LICENSES TO EXPORT AND FILE APPLICATIONS IN

FOREIGN COUNTRIES

INDEX I RULES RELATING TO PATENTS

PRACTICE BEFORE THE PATENT AND

TRADEMARK OFFICE

PART 10 [Reserved]

PART 11 REPRESENTATION OF OTHERS BEFORE THE

UNITED STATES PATENT AND TRADEMARK OFFICE

INDEX II RULES RELATING TO REPRESENTATION OF

OTHERS BEFORE THE UNITED STATES PATENT AND

TRADEMARK OFFICE

PART 41 PRACTICE BEFORE THE PATENT TRIAL AND

APPEAL BOARD

PART 42 TRIAL PRACTICE BEFORE THE PATENT TRIAL

AND APPEAL BOARD

PART 90 JUDICIAL REVIEW OF PATENT TRIAL AND

APPEAL BOARD DECISIONS

SUBCHAPTER B – ADMINISTRATION

PART 102 DISCLOSURE OF GOVERNMENT

INFORMATION

PART 104 LEGAL PROCESSES

SUBCHAPTER C – PROTECTION OF

FOREIGN MASK WORKS

PART 150 REQUESTS FOR PRESIDENTIAL

PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)

CHAPTER I — UNITED STATES PATENT

AND TRADEMARK OFFICE,

DEPARTMENT OF COMMERCE

SUBCHAPTER A — GENERAL

PATENTS

PART 1 — RULES OF PRACTICE IN PATENT

CASES

General Provisions

GENERAL INFORMATION AND

CORRESPONDENCE

Sec.

1.1 Addresses for non-trademark

correspondence with the United States

Patent and Trademark Ofﬁce.

1.2 Business to be transacted in writing.

1.3 Business to be conducted with decorum

and courtesy.

1.4 Nature of correspondence and signature

requirements.

1.5 Identiﬁcation of patent, patent application,

or patent-related proceeding.

1.6 Receipt of correspondence.

1.7 Times for taking action; Expiration on

Saturday, Sunday or Federal holiday.

1.8 Certiﬁcate of mailing or transmission.

January 2018R-1

1.9 Deﬁnitions.

1.10 Filing of correspondence by Priority Mail

Express®.

RECORDS AND FILES OF THE PATENT AND

TRADEMARK OFFICE

1.11 Files open to the public.

1.12 Assignment records open to public

inspection.

1.12 (pre-AIA) Assignment records open to

public inspection.

1.13 Copies and certiﬁed copies.

1.14 Patent applications preserved in

conﬁdence.

1.14 (pre-AIA) Patent applications preserved in

conﬁdence.

1.15 [Reserved]

FEES AND PAYMENT OF MONEY

1.16 National application ﬁling, search, and

examination fees.

1.17 Patent application and reexamination

processing fees.

1.18 Patent post allowance (including issue)

fees.

1.19 Document supply fees.

1.20 Post issuance fees.

1.21 Miscellaneous fees and charges.

1.22 Fees payable in advance.

1.23 Methods of payment.

1.24 [Reserved]

1.25 Deposit accounts.

1.26 Refunds.

1.27 Deﬁnition of small entities and establishing

status as a small entity to permit payment

of small entity fees; when a determination

of entitlement to small entity status and

notiﬁcation of loss of entitlement to small

entity status are required; fraud on the

Ofﬁce.

1.27 (pre-AIA) Deﬁnition of small entities and

establishing status as a small entity to

permit payment of small entity fees; when

a determination of entitlement to small

entity status and notiﬁcation of loss of

entitlement to small entity status are

required; fraud on the Ofﬁce.

1.28 Refunds when small entity status is later

established; how errors in small entity

status are excused.

1.29 Micro entity status.

National Processing Provisions

PROSECUTION OF APPLICATION AND

APPOINTMENT OF ATTORNEY OR AGENT

Sec.

1.31 Applicant may be represented by one or

more patent practitioners or joint inventors.

1.32 Power of attorney.

1.32 (pre-AIA) Power of attorney.

1.33 Correspondence respecting patent

applications, reexamination proceedings,

and other proceedings.

1.33 (pre-AIA) Correspondence respecting

patent applications, reexamination

proceedings, and other proceedings.

1.34 Acting in a representative capacity.

1.36 Revocation of power of attorney;

withdrawal of patent attorney or agent.

1.36 (pre-AIA) Revocation of power of

attorney; withdrawal of patent attorney or

agent.

WHO MAY APPLY FOR A PATENT

1.41 Inventorship.

1.41 (pre-AIA) Applicant for patent.

1.42 Applicant for patent.

1.42 (pre-AIA) When the inventor is dead.

1.43 Application for patent by a legal

representative of a deceased or legally

incapacitated inventor.

1.43 (pre-AIA) When the inventor is insane or

legally incapacitated.

1.44 [Reserved]

1.45 Application for patent by joint inventors.

1.45 (pre-AIA) Joint inventors.

1.46 Application for patent by an assignee,

obligated assignee, or a person who

otherwise shows sufﬁcient proprietary

interest in the matter.

1.46 (pre-AIA) Assigned inventions and patents.

1.47 [Removed and Reserved]

1.47 (pre-AIA) Filing when an inventor refuses

to sign or cannot be reached.

1.48 Correction of inventorship pursuant to 35

U.S.C. 116 or correction of the name or

order of names in a patent application,

other than a reissue application.

R-2January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

THE APPLICATION

1.51 General requisites of an application.

1.52 Language, paper, writing, margins,

compact disc speciﬁcations.

1.53 Application number, ﬁling date, and

completion of application.

1.53 (pre-PLT (AIA)) Application number,

ﬁling date, and completion of application.

1.53 (pre-AIA) Application number, ﬁling date,

and completion of application.

1.54 Parts of application to be ﬁled together;

ﬁling receipt.

1.55 Claim for foreign priority.

1.56 Duty to disclose information material to

patentability.

1.56 (pre-AIA) Duty to disclose information

material to patentability.

1.57 Incorporation by reference.

1.57 (pre-PLT) Incorporation by reference.

1.58 Chemical and mathematical formulae and

tables.

1.59 Expungement of information or copy of

papers in application ﬁle.

1.60 [Reserved]

1.61 [Reserved]

1.62 [Reserved]

OATH OR DECLARATION

1.63 Inventor’s oath or declaration.

1.63 (pre-AIA) Oath or declaration.

1.64 Substitute statement in lieu of an oath or

declaration.

1.64 (pre-AIA) Person making oath or

declaration.

1.66 Statements under oath.

1.66 (pre-AIA) Ofﬁcers authorized to

administer oaths.

1.67 Supplemental oath or declaration.

1.67 (pre-AIA) Supplemental oath or

declaration.

1.68 Declaration in lieu of oath.

1.69 Foreign language oaths and declarations.

1.70 [Reserved]

SPECIFICATION

1.71 Detailed description and speciﬁcation of

the invention.

1.72 Title and abstract.

1.73 Summary of the invention.

1.74 Reference to drawings.

1.75 Claim(s).

1.76 Application data sheet.

1.76 (2012-09-16 thru 2013-12-17) Application

data sheet.

1.76 (pre-AIA) Application data sheet.

1.77 Arrangement of application elements.

1.78 Claiming beneﬁt of earlier ﬁling date and

cross-references to other applications.

1.79 Reservation clauses not permitted.

THE DRAWINGS

1.81 Drawings required in patent application.

1.81 (2012-09-16 thru 2013-12-17) Drawings

required in patent application.

1.81 (pre-AIA) Drawings required in patent

application.

1.83 Content of drawing.

1.84 Standards for drawings.

1.85 Corrections to drawings.

1.88 [Reserved]

MODELS, EXHIBITS, SPECIMENS

1.91 Models or exhibits not generally admitted

as part of application or patent.

1.92 [Reserved]

1.93 Specimens.

1.94 Return of models, exhibits or specimens.

1.95 Copies of exhibits.

1.96 Submission of computer program listings.

INFORMATION DISCLOSURE STATEMENT

1.97 Filing of information disclosure statement.

1.98 Content of information disclosure

statement.

1.99 [Reserved]

EXAMINATION OF APPLICATIONS

1.101 [Reserved]

1.102 Advancement of examination.

1.103 Suspension of action by the Ofﬁce.

1.104 Nature of examination.

1.105 Requirements for information.

1.105 (pre-AIA) Requirements for information.

1.106 [Reserved]

1.107 [Reserved]

1.108 [Reserved]

January 2018R-3

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1.109 Effective ﬁling date of a claimed invention

under the Leahy-Smith America Invents

Act.

1.110 Inventorship and ownership of the subject

matter of individual claims.

ACTION BY APPLICANT AND FURTHER

CONSIDERATION

1.111 Reply by applicant or patent owner to a

non-ﬁnal Ofﬁce action.

1.112 Reconsideration before ﬁnal action.

1.113 Final rejection or action.

1.114 Request for continued examination.

AMENDMENTS

1.115 Preliminary amendments.

1.116 Amendments and afﬁdavits or other

evidence after ﬁnal action and prior to

appeal.

1.117 [Reserved]

1.118 [Reserved]

1.119 [Reserved]

1.121 Manner of making amendments in

applications.

1.122 [Reserved]

1.123 [Reserved]

1.124 [Reserved]

1.125 Substitute speciﬁcation.

1.126 Numbering of claims.

1.127 Petition from refusal to admit amendment.

TRANSITIONAL PROVISIONS

1.129 Transitional procedures for limited

examination after ﬁnal rejection and

restriction practice.

AFFIDAVITS OVERCOMING REJECTIONS

1.130 Afﬁdavit or declaration of attribution or

prior public disclosure under the

Leahy-Smith America Invents Act.

1.131 Afﬁdavit or declaration of prior invention

or to disqualify commonly owned patent

or published application as prior art.

1.132 Afﬁdavits or declarations traversing

rejections or objections.

INTERVIEWS

1.133 Interviews.

TIME FOR REPLY BY APPLICANT;

ABANDONMENT OF APPLICATION

1.134 Time period for reply to an Ofﬁce action.

1.135 Abandonment for failure to reply within

time period.

1.136 Extensions of time.

1.137 Revival of abandoned application, or

terminated or limited reexamination

prosecution.

1.138 Express abandonment.

1.139 [Reserved]

JOINDER OF INVENTIONS IN ONE APPLICATION;

RESTRICTION

1.141 Different inventions in one national

application.

1.142 Requirement for restriction.

1.143 Reconsideration of requirement.

1.144 Petition from requirement for restriction.

1.145 Subsequent presentation of claims for

different invention.

1.146 Election of species.

DESIGN PATENTS

1.151 Rules applicable.

1.152 Design drawings.

1.153 Title, description and claim, oath or

declaration.

1.153 (pre-AIA) Title, description and claim, oath

or declaration.

1.154 Arrangement of application elements in a

design application.

1.155 Expedited examination of design

applications.

PLANT PATENTS

1.161 Rules applicable.

1.162 Applicant, oath or declaration.

1.162 (pre-AIA) Applicant, oath or declaration.

1.163 Speciﬁcation and arrangement of

application elements in a plant application.

1.164 Claim.

1.165 Plant Drawings.

1.166 Specimens.

1.167 Examination.

REISSUES

1.171 Application for reissue.

R-4January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

1.172 Reissue applicant.

1.172 (pre-AIA) Applicants, assignees.

1.173 Reissue speciﬁcation, drawings, and

amendments.

1.174 [Reserved]

1.175 Inventor’s oath or declaration for a reissue

application.

1.175 (pre-AIA) Reissue oath or declaration.

1.176 Examination of reissue.

1.177 Issuance of multiple reissue patents.

1.178 Original patent; continuing duty of

applicant.

1.179 [Reserved]

PETITIONS AND ACTION BY THE DIRECTOR

1.181 Petition to the Director.

1.182 Questions not speciﬁcally provided for.

1.183 Suspension of rules.

1.184 [Reserved]

APPEAL TO THE PATENT TRIAL AND APPEAL

BOARD

1.191 Appeal to Patent Trial and Appeal Board.

1.192 [Reserved]

1.193 [Reserved]

1.194 [Reserved]

1.195 [Reserved]

1.196 [Reserved]

1.197 Termination of proceedings.

1.198 Reopening after a ﬁnal decision of the

Patent Trial and Appeal Board.

PUBLICATION OF APPLICATIONS

1.211 Publication of applications.

1.211 (pre-AIA) Publication of applications.

1.213 Nonpublication request.

1.215 Patent application publication.

1.215 (pre-AIA) Patent application publication.

1.217 Publication of a redacted copy of an

application.

1.219 Early publication.

1.221 Voluntary publication or republication of

patent application publication.

MISCELLANEOUS PROVISIONS

1.248 Service of papers; manner of service; proof

of service in cases other than interferences

and trials.

1.251 Unlocatable ﬁle.

1.265 [Removed]

PREISSUANCE SUBMISSIONS AND PROTESTS BY

THIRD PARTIES

1.290 Submissions by third parties in

applications.

1.291 Protests by the public against pending

applications.

1.292 [Reserved]

1.293 [Reserved]

1.293 (pre-2013-03-16) Statutory invention

registration.

1.294 [Reserved]

1.294 (pre-2013-03-16) Examination of request

for publication of a statutory invention

registration and patent application to which

the request is directed.

1.295 [Reserved]

1.295 (pre-2013-03-16) Review of decision

ﬁnally refusing to publish a statutory

invention registration.

1.296 [Reserved]

1.296 (pre-2013-03-16) Withdrawal of request

for publication of statutory invention

registration.

1.297 [Reserved]

1.297 (pre-2013-03-16) Publication of statutory

invention registration.

REVIEW OF PATENT AND TRADEMARK OFFICE

DECISIONS BY COURT

1.301 [Reserved]

1.302 [Reserved]

1.303 [Reserved]

1.304 [Reserved]

ALLOWANCE AND ISSUE OF PATENT

1.311 Notice of Allowance.

1.312 Amendments after allowance.

1.313 Withdrawal from issue.

1.314 Issuance of patent.

1.315 Delivery of patent.

1.316 Application abandoned for failure to pay

issue fee.

1.317 [Reserved]

1.318 [Reserved]

DISCLAIMER

January 2018R-5

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1.321 Statutory disclaimers, including terminal

disclaimers.

1.321 (pre-AIA) Statutory disclaimers, including

terminal disclaimers.

CORRECTION OF ERRORS IN PATENT

1.322 Certiﬁcate of correction of Ofﬁce mistake.

1.323 Certiﬁcate of correction of applicant’s

mistake.

1.324 Correction of inventorship in patent,

pursuant to 35 U.S.C. 256.

1.325 Other mistakes not corrected.

ARBITRATION AWARDS

1.331 [Reserved]

1.332 [Reserved]

1.333 [Reserved]

1.334 [Reserved]

1.335 Filing of notice of arbitration awards.

AMENDMENT OF RULES

1.351 Amendments to rules will be published.

1.352 [Reserved]

MAINTENANCE FEES

1.362 Time for payment of maintenance fees.

1.363 Fee address for maintenance fee purposes.

1.366 Submission of maintenance fees.

1.377 Review of decision refusing to accept and

record payment of a maintenance fee ﬁled

prior to expiration of patent.

1.378 Acceptance of delayed payment of

maintenance fee in expired patent to

reinstate patent.

International Processing Provisions

GENERAL INFORMATION

Sec.

1.401 Deﬁnitions of terms under the Patent

Cooperation Treaty.

1.412 The United States Receiving Ofﬁce.

1.413 The United States International Searching

Authority.

1.414 The United States Patent and Trademark

Ofﬁce as a Designated Ofﬁce or Elected

Ofﬁce.

1.415 The International Bureau.

1.416 The United States International Preliminary

Examining Authority.

1.417 Submission of translation of international

publication.

1.419 Display of currently valid control number

under the Paperwork Reduction Act.

WHO MAY FILE AN INTERNATIONAL

APPLICATION

1.421 Applicant for international application.

1.421 (pre-AIA) Applicant for international

application.

1.422 Legal representative as applicant in an

international application.

1.422 (pre-AIA) When the inventor is dead.

1.423 [Removed and Reserved]

1.423 (pre-AIA) When the inventor is insane or

legally incapacitated.

1.424 Assignee, obligated assignee, or person

having sufﬁcient proprietary interest as

applicant in an international application.

1.425 [Reserved]

THE INTERNATIONAL APPLICATION

1.431 International application requirements.

1.431 (pre-AIA) International application

requirements.

1.432 Designation of States by ﬁling an

international application.

1.433 Physical requirements of international

application.

1.434 The request.

1.435 The description.

1.436 The claims.

1.437 The drawings.

1.438 The abstract.

FEES

1.445 International application ﬁling, processing

and search fees.

1.446 Refund of international application ﬁling

and processing fees.

PRIORITY

1.451 The priority claim and priority document

in an international application.

1.452 Restoration of right of priority.

1.453 Transmittal of documents relating to earlier

search or classiﬁcation.

R-6January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

REPRESENTATION

1.455 Representation in international

applications.

TRANSMITTAL OF RECORD COPY

1.461 Procedures for transmittal of record copy

to the International Bureau.

TIMING

1.465 Timing of application processing based on

the priority date.

1.468 Delays in meeting time limits.

AMENDMENTS

1.471 Corrections and amendments during

international processing.

1.472 Changes in person, name, or address of

applicants and inventors.

UNITY OF INVENTION

1.475 Unity of invention before the International

Searching Authority, the International

Preliminary Examining Authority and

during the national stage.

1.476 Determination of unity of invention before

the International Searching Authority.

1.477 Protest to lack of unity of invention before

the International Searching Authority.

INTERNATIONAL PRELIMINARY EXAMINATION

1.480 Demand for international preliminary

examination.

1.481 Payment of international preliminary

examination fees.

1.482 International preliminary examination and

processing fees.

1.484 Conduct of international preliminary

examination.

1.485 Amendments by applicant during

international preliminary examination.

1.488 Determination of unity of invention before

the International Preliminary Examining

Authority.

1.489 Protest to lack of unity of invention before

the International Preliminary Examining

Authority.

NATIONAL STAGE

1.491 National stage commencement, entry, and

fulﬁllment.

1.491 (pre-AIA) National stage commencement

and entry.

1.492 National stage fees.

1.494 [Reserved]

1.495 Entering the national stage in the United

States of America.

1.495 (pre-AIA) Entering the national stage in

the United States of America.

1.496 Examination of international applications

in the national stage.

1.497 Inventor’s oath or declaration under 35

U.S.C. 371(c)(4).

1.497 (pre-AIA) Oath or declaration under 35

U.S.C. 371(c)(4).

1.499 Unity of invention during the national

stage.

Ex Parte Reexamination of Patents

CITATION OF PRIOR ART AND WRITTEN

STATEMENTS

Sec.

1.501 Citation of prior art and written statements

in patent ﬁles.

1.502 Processing of prior art citations during an

ex parte reexamination proceeding.

REQUEST FOR EX PARTE REEXAMINATION

1.510 Request for ex parte reexamination.

1.515 Determination of the request for ex parte

reexamination.

1.520 Ex parte reexamination at the initiative of

the Director.

EX PARTE REEXAMINATION

1.525 Order for ex parte reexamination.

1.530 Statement by patent owner in ex parte

reexamination; amendment by patent

owner in ex parte or inter partes

reexamination; inventorship change in ex

parte or inter partes reexamination.

1.535 Reply by third party requester in ex parte

reexamination.

1.540 Consideration of responses in ex parte

reexamination.

1.550 Conduct of ex parte reexamination

proceedings.

January 2018R-7

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1.552 Scope of reexamination in ex parte

reexamination proceedings.

1.555 Information material to patentability in ex

parte reexamination and inter partes

reexamination proceedings.

1.560 Interviews in ex parte reexamination

proceedings.

1.565 Concurrent ofﬁce proceedings which

include an ex parte reexamination

proceeding.

CERTIFICATE

1.570 Issuance and publication of ex parte

reexamination certiﬁcate concludes ex

parte reexamination proceeding.

Supplemental Examination of Patents

1.601 Filing of papers in supplemental

examination.

1.605 Items of information.

1.610 Content of request for supplemental

examination.

1.615 Format of papers ﬁled in a supplemental

examination proceeding.

1.620 Conduct of supplemental examination

proceeding.

1.625 Conclusion of supplemental examination;

publication of supplemental examination

certiﬁcate; procedure after conclusion.

Adjustment and Extension of Patent Term

ADJUSTMENT OF PATENT TERM DUE TO

EXAMINATION DELAY

Sec.

1.701 Extension of patent term due to

examination delay under the Uruguay

Round Agreements Act (original

applications, other than designs, ﬁled on

or after June 8, 1995, and before May 29,

2000).

1.702 Grounds for adjustment of patent term due

to examination delay under the Patent

Term Guarantee Act of 1999 (original

applications, other than designs, ﬁled on

or after May 29, 2000).

1.702 (pre-2013-04-01) Grounds for adjustment

of patent term due to examination delay

under the Patent Term Guarantee Act of

1999 (original applications, other than

designs, ﬁled on or after May 29, 2000).

1.703 Period of adjustment of patent term due to

examination delay.

1.703 (2012-09-17 thru 2013-03-31) Period of

adjustment of patent term due to

examination delay.

1.703 (pre-2012-09-17) Period of adjustment of

patent term due to examination delay.

1.704 Reduction of period of adjustment of patent

term.

1.704 (2013-12-18 thru 2015-03-09) Reduction

of period of adjustment of patent term.

1.704 (2012-09-17 thru 2013-12-17) Reduction

of period of adjustment of patent term.

1.704 (pre-2013-03-31) Reduction of period of

adjustment of patent term.

1.704 (pre-2012-09-17) Reduction of period of

adjustment of patent term.

1.705 Patent term adjustment determination.

1.705 (pre-2013-04-01) Patent term adjustment

determination.

EXTENSION OF PATENT TERM DUE TO

REGULATORY REVIEW

1.710 Patents subject to extension of the patent

term.

1.720 Conditions for extension of patent term.

1.730 Applicant for extension of patent term;

signature requirements.

1.740 Formal requirements for application for

extension of patent term; correction of

informalities.

1.741 Complete application given a ﬁling date;

petition procedure.

1.750 Determination of eligibility for extension

of patent term.

1.760 Interim extension of patent term under 35

U.S.C. 156(e)(2).

1.765 Duty of disclosure in patent term extension

proceedings.

1.770 Express withdrawal of application for

extension of patent term.

1.775 Calculation of patent term extension for a

human drug, antibiotic drug, or human

biological product.

1.776 Calculation of patent term extension for a

food additive or color additive.

1.777 Calculation of patent term extension for a

medical device.

R-8January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

1.778 Calculation of patent term extension for

an animal drug product.

1.779 Calculation of patent term extension for a

veterinary biological product.

1.780 Certiﬁcate or order of extension of patent

term.

1.785 Multiple applications for extension of term

of the same patent or of different patents

for the same regulatory review period for

a product.

1.790 Interim extension of patent term under 35

U.S.C. 156(d)(5).

1.791 Termination of interim extension granted

prior to regulatory approval of a product

for commercial marketing or use.

Biotechnology Invention Disclosures

DEPOSIT OF BIOLOGICAL MATERIAL

Sec.

1.801 Biological material.

1.802 Need or opportunity to make a deposit.

1.803 Acceptable depository.

1.804 Time of making an original deposit.

1.805 Replacement or supplement of deposit.

1.806 Term of deposit.

1.807 Viability of deposit.

1.808 Furnishing of samples.

1.809 Examination procedures.

APPLICATION DISCLOSURES CONTAINING

NUCLEOTIDE AND/OR AMINO ACID SEQUENCES

1.821 Nucleotide and/or amino acid sequence

disclosures in patent applications.

1.822 Symbols and format to be used for

nucleotide and/or amino acid sequence

data.

1.823 Requirements for nucleotide and/or amino

acid sequences as part of the application.

1.824 Form and format for nucleotide and/or

amino acid sequence submissions in

computer readable form.

1.825 Amendments to or replacement of

sequence listing and computer readable

copy thereof.

Inter Partes Reexamination of Patents That Issued From

an Original Application Filed in the United States on or

After November 29, 1999

PRIOR ART CITATIONS

Sec.

1.902 Processing of prior art citations during an

inter partes reexamination proceeding.

REQUIREMENTS FOR INTER PARTES

REEXAMINATION PROCEEDINGS

1.903 Service of papers on parties in inter partes

reexamination.

1.904 Notice of inter partes reexamination in

Ofﬁcial Gazette.

1.905 Submission of papers by the public in inter

partes reexamination.

1.906 Scope of reexamination in inter partes

reexamination proceeding.

1.907 Inter partes reexamination prohibited.

1.913 Persons eligible to ﬁle, and time for ﬁling,

a request for inter partes reexamination.

1.915 Content of request for inter partes

reexamination.

1.919 Filing date of request for inter partes

reexamination.

1.923 Examiner’s determination on the request

for inter partes reexamination.

1.925 Partial refund if request for inter partes

reexamination is not ordered.

1.927 Petition to review refusal to order inter

partes reexamination.

INTER PARTES REEXAMINATION OF PATENTS

1.931 Order for inter partes reexamination.

INFORMATION DISCLOSURE IN INTER PARTES

REEXAMINATION

1.933 Patent owner duty of disclosure in inter

partes reexamination proceedings.

OFFICE ACTIONS AND RESPONSES (BEFORE THE

EXAMINER) IN INTER PARTES REEXAMINATION

1.935 Initial Ofﬁce action usually accompanies

order for inter partes reexamination.

1.937 Conduct of inter partes reexamination.

1.939 Unauthorized papers in inter partes

reexamination

1.941 Amendments by patent owner in inter

partes reexamination.

1.943 Requirements of responses, written

comments, and briefs in inter partes

reexamination.

January 2018R-9

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1.945 Response to Ofﬁce action by patent owner

in inter partes reexamination.

1.947 Comments by third party requester to

patent owner’s response in inter partes

reexamination.

1.948 Limitations on submission of prior art by

third party requester following the order

for inter partes reexamination.

1.949 Examiner’s Ofﬁce action closing

prosecution in inter partes reexamination.

1.951 Options after Ofﬁce action closing

prosecution in inter partes reexamination.

1.953 Examiner’s Right of Appeal Notice in inter

partes reexamination.

INTERVIEWS PROHIBITED IN INTER PARTES

REEXAMINATION

1.955 Interviews prohibited in inter partes

reexamination proceedings.

EXTENSIONS OF TIME, TERMINATING OF

REEXAMINATION PROSECUTION, AND

PETITIONS TO REVIVE IN INTER PARTES

REEXAMINATION

1.956 Patent owner extensions of time in inter

partes reexamination.

1.957 Failure to ﬁle a timely, appropriate or

complete response or comment in inter

partes reexamination.

1.958 Petition to revive inter partes

reexamination prosecution terminated for

lack of patent owner response.

APPEAL TO THE PATENT TRIAL AND APPEAL

BOARD IN INTER PARTES REEXAMINATION

1.959 Appeal in inter partes reexamination.

1.961 - 1.977 [Reserved]

1.979 Return of Jurisdiction from the Patent

Trial and Appeal Board; termination of

appeal proceedings.

1.981 Reopening after a ﬁnal decision of the

Patent Trial and Appeal Board.

APPEAL TO THE UNITED STATES COURT OF

APPEALS FOR THE FEDERAL CIRCUIT IN INTER

PARTES REEXAMINATION

1.983 Appeal to the United States Court of

Appeals for the Federal Circuit in inter

partes reexamination.

CONCURRENT PROCEEDINGS INVOLVING SAME

PATENT IN INTER PARTES REEXAMINATION

1.985 Notiﬁcation of prior or concurrent

proceedings in inter partes reexamination.

1.987 Suspension of inter partes reexamination

proceeding due to litigation.

1.989 Merger of concurrent reexamination

proceedings.

1.991 Merger of concurrent reissue application

and inter partes reexamination proceeding.

1.993 Suspension of concurrent interference and

inter partes reexamination proceeding.

1.995 Third party requester’s participation rights

preserved in merged proceeding.

REEXAMINATION CERTIFICATE IN INTER

PARTES REEXAMINATION

1.997 Issuance and publication of inter partes

reexamination certiﬁcate concludes inter

partes reexamination proceeding.

International Design Application

General Information

Sec.

1.1001 Deﬁnitions related to international design

applications.

1.1002 The United States Patent and Trademark

Ofﬁce as an ofﬁce of indirect ﬁling.

1.1003 The United States Patent and Trademark

Ofﬁce as a designated ofﬁce.

1.1004 The International Bureau.

1.1005 Display of currently valid control number

under the Paperwork Reduction Act.

WHO MAY FILE AN INTERNATIONAL DESIGN

APPLICATION

1.1011 Applicant for international design

application.

1.1012 Applicant’s Contracting Party.

THE INTERNATIONAL DESIGN APPLICATION

1.1021 Contents of the international design

application.

1.1022 Form and signature.

1.1023 Filing date of an international design

application in the United States.

1.1024 The description.

1.1025 The claim.

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MANUAL OF PATENT EXAMINING PROCEDURE

1.1026 Reproductions.

1.1027 Specimens.

1.1028 Deferment of publication.

FEES

1.1031 International design application fees.

REPRESENTATION

1.1041 Representation in an international design

application.

1.1042 Correspondence respecting international

design applications ﬁled with the Ofﬁce

as an ofﬁce of indirect ﬁling.

TRANSMITTAL OF INTERNATIONAL DESIGN

APPLICATION TO THE INTERNATIONAL BUREAU

1.1045 Procedures for transmittal of international

design application to the International

Bureau.

RELIEF FROM PRESCRIBED TIME LIMITS;

CONVERSION TO A DESIGN APPLICATION UNDER

35 U.S.C. CHAPTER 16

1.1051 Relief from prescribed time limits.

1.1052 Conversion to a design application under

35 U.S.C. chapter 16.

NATIONAL PROCESSING OF INTERNATIONAL

DESIGN APPLICATIONS

1.1061 Rules applicable.

1.1062 Examination.

1.1063 Notiﬁcation of Refusal.

1.1064 One independent and distinct design.

1.1065 Corrections and other changes in the

International Register.

1.1066 Correspondence address for a

nonprovisional international design

application.

1.1067 Title, description, and inventor’s oath or

declaration.

1.1068 Statement of grant of protection.

1.1070 Notiﬁcation of Invalidation.

1.1071 Grant of protection for an industrial design

only upon issuance of a patent.

Subpart A — General Provisions

GENERAL INFORMATION AND

CORRESPONDENCE

§ 1.1 Addresses for non-trademark

correspondence with the United States Patent

and Trademark Ofﬁce.

(a) In general. Except as provided in paragraphs

(a)(3)(i), (a)(3)(ii), and (d)(1) of this section, all

correspondence intended for the United States Patent

and Trademark Ofﬁce must be addressed to either

“Director of the United States Patent and Trademark

Ofﬁce, P.O. Box 1450, Alexandria, Virginia

22313-1450” or to speciﬁc areas within the Ofﬁce

as set out in paragraphs (a)(1), and (a)(3)(iii) of this

section. When appropriate, correspondence should

also be marked for the attention of a particular ofﬁce

or individual.

(1) Patent correspondence.

(i) In general. All correspondence

concerning patent matters processed by

organizations reporting to the Commissioner for

Patents should be addressed to: Commissioner for

Patents, PO Box 1450, Alexandria, Virginia

22313-1450.

(ii) Patent Trial and Appeal Board. See

§ 41.10 or § 42.6 of this title. Notices of appeal,

appeal briefs, reply briefs, requests for oral hearing,

as well as all other correspondence in an application

or a patent involved in an appeal to the Board for

which an address is not otherwise speciﬁed, should

be addressed as set out in paragraph (a)(1)(i) of this

section.

(2) [Reserved]

(3) Ofﬁce of General Counsel

correspondence.—

(i) Litigation and service.

Correspondence relating to pending litigation or

otherwise within the scope of part 104 of this title

shall be addressed as provided in § 104.2.

(ii) Disciplinary proceedings.

Correspondence to counsel for the Director of the

Ofﬁce of Enrollment and Discipline relating to

disciplinary proceedings pending before a Hearing

Ofﬁcer or the Director shall be mailed to: Mail Stop

January 2018R-11

§ 1.1CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

8, Ofﬁce of the Solicitor, United States Patent and

Trademark Ofﬁce, P.O. Box 1450, Alexandria,

Virginia 22313-1450.

(iii) Solicitor, in general.

Correspondence to the Ofﬁce of the Solicitor not

otherwise provided for shall be addressed to: Mail

Stop 8, Ofﬁce of the Solicitor, United States Patent

and Trademark Ofﬁce, P.O. Box 1450, Alexandria,

Virginia 22313-1450.

(iv) General Counsel. Correspondence

to the Ofﬁce of the General Counsel not otherwise

provided for, including correspondence to the

General Counsel relating to disciplinary

proceedings, shall be addressed to: General Counsel,

United States Patent and Trademark Ofﬁce, PO Box

1450, Alexandria, Virginia 22313-1450.

(v) Improper correspondence.

Correspondence improperly addressed to a Post

Ofﬁce Box speciﬁed in paragraphs (a)(3)(i) and

(a)(3)(ii) of this section will not be ﬁled elsewhere

in the United States Patent and Trademark Ofﬁce,

and may be returned.

(4) Ofﬁce of Public Records

correspondence.

(i) Assignments. All patent-related

documents submitted by mail to be recorded by

Assignment Services Division, except for documents

ﬁled together with a new application, should be

addressed to: Mail Stop Assignment Recordation

Services, Director of the United States Patent and

Trademark Ofﬁce, P.O. Box 1450, Alexandria,

Virginia 22313-1450. See § 3.27.

(ii) Documents. All requests for

certiﬁed or uncertiﬁed copies of patent documents

should be addressed to: Mail Stop Document

Services, Director of the United States Patent and

Trademark Ofﬁce, P.O. Box 1450, Alexandria,

Virginia 22313-1450.

(5) Ofﬁce of Enrollment and Discipline

correspondence. All correspondence directed to the

Ofﬁce of Enrollment and Discipline concerning

enrollment, registration, and investigation matters

should be addressed to Mail Stop OED, Director of

the United States Patent and Trademark Ofﬁce, P.O.

Box 1450, Alexandria, Virginia 22313-1450.

(b) Patent Cooperation Treaty. Letters and

other communications relating to international

applications during the international stage and prior

to the assignment of a national serial number should

be additionally marked “Mail Stop PCT.”

examination proceedings.

(1) All correspondence concerning ex parte

reexamination, other than correspondence to the

Ofﬁce of the General Counsel pursuant to § 1.1(a)(3)

and § 102.4 of this chapter, should be additionally

marked “Mail Stop Ex Parte Reexam.”

(2) All correspondence concerning inter

partes reexamination, other than correspondence

to the Ofﬁce of the General Counsel pursuant to §

1.1(a)(3) and § 102.4 of this chapter, should be

additionally marked "Mail Stop Inter Partes

Reexam."

(3) Requests for supplemental examination

(original and corrected request papers) and any other

paper ﬁled in a supplemental examination

proceeding, should be additionally marked "Mail

Stop Supplemental Examination."

(4) All correspondence concerning a

reexamination proceeding ordered as a result of a

supplemental reexamination proceeding, other than

correspondence to the Ofﬁce of the General Counsel

pursuant to § 1.1(a)(3) and § 102.4 of this chapter

should be additionally marked “Mail Stop Ex Parte

Reexam.”

(d) Payments of maintenance fees in patents not

submitted electronically over the Internet, and

correspondence related to maintenance fees may be

addressed to: Director of the United States Patent

and Trademark Ofﬁce, Attn: Maintenance Fee, 2051

Jamieson Avenue, Suite 300, Alexandria, Virginia

22314.

(e) Patent term extension. All applications for

extension of patent term under 35 U.S.C. 156 and

any communications relating thereto intended for

the United States Patent and Trademark Ofﬁce

should be additionally marked "Mail Stop

Hatch-Waxman PTE." When appropriate, the

communication should also be marked to the

attention of a particular individual, as where a

decision has been rendered.

(f) [Reserved]

[46 FR 29181, May 29, 1981; para. (d) added, 49

FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para.

(e), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;

para. (f) added, 52 FR 9394, Mar. 24, 1987; para. (g)

R-12January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1

added, 53 FR 16413, May 9,1988; para. (h) added, 54

FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; para.

(i) added, 60 FR 20195, Apr. 25, 1995, effective June 8,

1995; para. (a) revised and para. (g) removed and

reserved, 61 FR 56439, Nov. 1, 1996, effective Dec. 2,

1996; para. (b) revised, 64 FR 48900, Sept. 8, 1999,

effective Oct. 30, 1999; paras. (a) and (d) revised, 66 FR

39447, July 31, 2001, effective Oct. 1, 2001; revised, 68

FR 14332, Mar. 25, 2003, effective May 1, 2003; para

(a)(2) corrected, 68 FR 19371, Apr. 21, 2003, effective

May 1, 2003; section heading, para. (a) introductory text

and para. (a)(4) revised, para. (a)(2) removed and

reserved, and note following para. (f) removed, 68 FR

48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (c)

revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21,

2004; para. (a)(4)(i) revised and para. (f) removed and

reserved, 69 FR 29865, May 26, 2004, effective June 25,

2004; para. (a) introductory text revised and para. (a)(5)

added, 69 FR 35427, June 24, 2004, effective July 26,

2004; para. (a)(1)(ii) revised and para. (a)(1)(iii) removed,

69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;

para. (c)(1) revised, 72 FR 18892, Apr. 16, 2007, effective

May 16, 2007; para. (d) revised, 73 FR 47534, Aug. 14,

2008, effective Oct. 2, 2008; paras. (a)(3)(ii) and

(a)(3)(iii) revised, 75 FR 36294, June 25, 2010, effective

June 25, 2010; para. (a)(1)(ii) revised, 77 FR 46615, Aug.

6, 2012, effective Sept. 16, 2012; para. (e) revised, 77

FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para.

18, 2013]

§ 1.2 Business to be transacted in writing.

All business with the Patent and Trademark Ofﬁce

should be transacted in writing. The personal

attendance of applicants or their attorneys or agents

at the Patent and Trademark Ofﬁce is unnecessary.

The action of the Patent and Trademark Ofﬁce will

be based exclusively on the written record in the

Ofﬁce. No attention will be paid to any alleged oral

promise, stipulation, or understanding in relation to

which there is disagreement or doubt.

§ 1.3 Business to be conducted with decorum

and courtesy.

Applicants and their attorneys or agents are required

to conduct their business with the United States

Patent and Trademark Ofﬁce with decorum and

courtesy. Papers presented in violation of this

requirement will be submitted to the Director and

will not be entered. A notice of the non-entry of the

paper will be provided. Complaints against

examiners and other employees must be made in

correspondence separate from other papers.

[Amended, 61 FR 56439, Nov. 1, 1996, effective

Dec. 2, 1996; revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; revised, 68 FR 38611, June 30,

2003, effective July 30, 2003]

§ 1.4 Nature of correspondence and

signature requirements.

(a) Correspondence with the Patent and

Trademark Ofﬁce comprises:

(1) Correspondence relating to services and

facilities of the Ofﬁce, such as general inquiries,

requests for publications supplied by the Ofﬁce,

orders for printed copies of patents, orders for copies

of records, transmission of assignments for

recording, and the like, and

(2) Correspondence in and relating to a

particular application or other proceeding in the

Ofﬁce. See particularly the rules relating to the

ﬁling, processing, or other proceedings of national

applications in subpart B of this part; of international

applications in subpart C of this part; of ex parte

reexaminations of patents in subpart D of this part;

of supplemental examination of patents in subpart

E of this part; of extension of patent term in subpart

F of this part; of inter partes reexaminations of

patents in subpart H of this part; of international

design applications in subpart I of this part; and of

the Patent Trial and Appeal Board in parts 41 and

42 of this chapter.

(b) Since each ﬁle must be complete in itself, a

separate copy of every paper to be ﬁled in a patent

application, patent ﬁle, or other proceeding must be

furnished for each ﬁle to which the paper pertains,

even though the contents of the papers ﬁled in two

or more ﬁles may be identical. The ﬁling of

duplicate copies of correspondence in the ﬁle of an

application, patent, or other proceeding should be

avoided, except in situations in which the Ofﬁce

requires the ﬁling of duplicate copies. The Ofﬁce

may dispose of duplicate copies of correspondence

in the ﬁle of an application, patent, or other

proceeding.

by different branches or sections of the Ofﬁce, each

distinct subject, inquiry or order must be contained

January 2018R-13

§ 1.4CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

in a separate paper to avoid confusion and delay in

answering papers dealing with different subjects.

Subjects provided for on a single Ofﬁce or World

Intellectual Property Organization form may be

contained in a single paper.

(d)(1) Handwritten signature. Each piece

of correspondence, except as provided in paragraphs

(d)(2), (d)(3), (d)(4), (e), and (f) of this section, ﬁled

in an application, patent ﬁle, or other proceeding in

the Ofﬁce which requires a person’s signature, must:

(i) Be an original, that is, have an original

handwritten signature personally signed, in

permanent dark ink or its equivalent, by that person;

(ii) Be a direct or indirect copy, such as

a photocopy or facsimile transmission (§ 1.6(d)), of

an original. In the event that a copy of the original

is ﬁled, the original should be retained as evidence

of authenticity. If a question of authenticity arises,

the Ofﬁce may require submission of the original.

(2) S-signature. An S-signature is a

signature inserted between forward slash marks, but

not a handwritten signature as deﬁned by paragraph

(d)(1) of this section. An S-signature includes any

signature made by electronic or mechanical means,

and any other mode of making or applying a

signature other than a handwritten signature as

provided for in paragraph (d)(1) of this section.

Correspondence being ﬁled in the Ofﬁce in paper,

by facsimile transmission as provided in § 1.6(d),

or via the Ofﬁce electronic ﬁling system as an

attachment as provided in § 1.6(a)(4), for a patent

application, patent, or a reexamination or

supplemental examination proceeding may be

S-signature signed instead of being personally

signed (i.e., with a handwritten signature) as

provided for in paragraph (d)(1) of this section. The

requirements for an S-signature under this paragraph

(d)(2) of this section are as follows.

(i) The S-signature must consist only of

letters, or Arabic numerals, or both, with appropriate

spaces and commas, periods, apostrophes, or

hyphens for punctuation, and the person signing the

correspondence must insert his or her own

S-signature with a ﬁrst single forward slash mark

before, and a second single forward slash mark after,

the S-signature (e.g., /Dr. James T. Jones, Jr./); and

(ii) A patent practitioner (§ 1.32(a)(1)),

signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must

supply his/her registration number either as part of

the S-signature, or immediately below or adjacent

to the S-signature. The number (#) character may

be used only as part of the S-signature when

appearing before a practitioner’s registration

number; otherwise the number character may not

be used in an S-signature.

(iii) The signer’s name must be:

(A) Presented in printed or typed

form preferably immediately below or adjacent the

S-signature, and

(B) Reasonably speciﬁc enough so

that the identity of the signer can be readily

recognized.

(3) Electronically submitted

correspondence. Correspondence permitted via the

Ofﬁce electronic ﬁling system may be signed by a

graphic representation of a handwritten signature

as provided for in paragraph (d)(1) of this section

or a graphic representation of an S-signature as

provided for in paragraph (d)(2) of this section when

it is submitted via the Ofﬁce electronic ﬁling system.

(4) Certiﬁcations—

(i) Certiﬁcation as to the paper

presented. The presentation to the Ofﬁce (whether

by signing, ﬁling, submitting, or later advocating)

of any paper by a party, whether a practitioner or

non-practitioner, constitutes a certiﬁcation under §

11.18(b) of this subchapter. Violations of §

11.18(b)(2) of this subchapter by a party, whether

a practitioner or non-practitioner, may result in the

imposition of sanctions under § 11.18(c) of this

subchapter. Any practitioner violating § 11.18(b)

of this subchapter may also be subject to disciplinary

action. See § 11.18(d) of this subchapter.

(ii) Certiﬁcation as to the signature. The

person inserting a signature under paragraph (d)(2)

or (d)(3) of this section in a document submitted to

the Ofﬁce certiﬁes that the inserted signature

appearing in the document is his or her own

signature. A person submitting a document signed

by another under paragraph (d)(2) or (d)(3) of this

section is obligated to have a reasonable basis to

believe that the person whose signature is present

on the document was actually inserted by that

person, and should retain evidence of authenticity

of the signature. Violations of the certiﬁcation as to

the signature of another or a person’s own signature

R-14January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.4

as set forth in this paragraph may result in the

imposition of sanctions under § 11.18(c) and (d) of

this chapter.

(5) Forms. The Ofﬁce provides forms for

the public to use in certain situations to assist in the

ﬁling of correspondence for a certain purpose and

to meet certain requirements for patent applications

and proceedings. Use of the forms for purposes for

which they were not designed is prohibited. No

changes to certiﬁcation statements on the Ofﬁce

forms (e.g., oath or declaration forms, terminal

disclaimer forms, petition forms, and nonpublication

request forms) may be made. The existing text of a

form, other than a certiﬁcation statement, may be

modiﬁed, deleted, or added to, if all text identifying

the form as an Ofﬁce form is removed. The

presentation to the Ofﬁce (whether by signing,

ﬁling, submitting, or later advocating) of any Ofﬁce

form with text identifying the form as an Ofﬁce

form by a party, whether a practitioner or

non-practitioner, constitutes a certiﬁcation under §

11.18(b) of this chapter that the existing text and

any certiﬁcation statements on the form have not

been altered other than permitted by EFS-Web

customization.

(e) The following correspondence must be

submitted with an original handwritten signature

personally signed in permanent dark ink or its

equivalent:

(1) Correspondence requiring a person’s

signature and relating to registration to practice

before the Patent and Trademark Ofﬁce in patent

cases, enrollment and disciplinary investigations,

or disciplinary proceedings; and

(2) Payments by credit cards where the

payment is not being made via the Ofﬁce’s

electronic ﬁling systems.

(f) When a document that is required by statute

to be certiﬁed must be ﬁled, a copy, including a

photocopy or facsimile transmission, of the

certiﬁcation is not acceptable.

(g) An applicant who has not made of record a

registered attorney or agent may be required to state

whether assistance was received in the preparation

or prosecution of the patent application, for which

any compensation or consideration was given or

charged, and if so, to disclose the name or names

of the person or persons providing such assistance.

Assistance includes the preparation for the applicant

of the speciﬁcation and amendments or other papers

to be ﬁled in the Patent and Trademark Ofﬁce, as

well as other assistance in such matters, but does

not include merely making drawings by draftsmen

or stenographic services in typing papers.

(h) Ratiﬁcation/conﬁrmation/evidence of

authenticity: The Ofﬁce may require ratiﬁcation,

conﬁrmation (which includes submission of a

duplicate document but with a proper signature), or

evidence of authenticity of a signature, such as when

the Ofﬁce has reasonable doubt as to the authenticity

(veracity) of the signature, e.g., where there are

variations of a signature, or where the signature and

the typed or printed name, do not clearly identify

the person signing.

[24 FR 10332, Dec. 22, 1959; 43 FR 20461, May

11, 1978; para. (a), 48 FR 2707, Jan. 20, 1983, effective

Feb. 27, 1983; para. (a), 49 FR 48416, Dec. 12, 1984,

effective Feb. 11, 1985; para. (a)(2), 53 FR 47807, Nov.

28, 1988, effective Jan. 1, 1989; paras. (d)-(f) added, 58

FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para.

(d) revised & para. (g) added, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; paras. (a)(2) and (d)(1)

revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30,

1999; paras. (b) and (c) revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; para. (a)(2) revised, 65 FR

76756, Dec. 7, 2000, effective Feb. 5, 2001; para.

(d)(1)(iii)(A) amended, 67 FR 79520, Dec. 30, 2002,

effective Dec. 30, 2002; para. (d)(1)(iii)(B) revised, 68

FR 14332, Mar. 25, 2003, effective May 1, 2003; para.

(d)(1)(iii) removed and reserved, paras. (a)(1), (a)(2), (b),

(d)(1), introductory text, and (d)(1)(ii) revised, 68 FR

48286, Aug. 13, 2003, effective Sept. 12, 2003; para.

(a)(2) revised, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; paras. (d) and (e) revised and para. (h)

added, 69 FR 56481, Sept. 21, 2004, effective Sept. 21,

2004; para. (d)(2) introductory text and paragraph

(d)(2)(ii) revised, 70 FR 56119, Sept. 26, 2005, effective

Nov. 25, 2005; paras. (d)(2) introductory text, (d)(3), and

(d)(4)(ii) revised, 72 FR 2770, Jan. 23, 2007, effective

Jan. 23, 2007; paras. (d)(3) and (d)(4)(i) revised, para.

(d)(4)(ii)(C) added, 73 FR 47650, Aug. 14, 2008,

effective Sept. 15, 2008; para. (a)(2) revised, 77 FR

46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (e)

revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16,

2012; para. (d)(4)(i) revised, 78 FR 20180, Apr. 3, 2013,

effective May 3, 2013; paras. (a)(2), (c) and (d) revised,

78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013;

para. (a)(2) revised, 80 FR 17918, Apr. 2, 2015, effective

May 13, 2015]

January 2018R-15

§ 1.4CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 1.5 Identiﬁcation of patent, patent

application, or patent-related proceeding.

(a) No correspondence relating to an application

should be ﬁled prior to receipt of the assigned

application number (i.e., U.S. application number,

international application number, or international

registration number as appropriate). When

correspondence directed to the Patent and

Trademark Ofﬁce concerns a previously ﬁled

application for a patent, it must identify on the top

page in a conspicuous location, the application

number (consisting of the series code and the serial

number; e.g., 07/123,456), or the serial number and

ﬁling date assigned to that application by the Patent

and Trademark Ofﬁce, or the international

application number of the international application,

or the international registration number of an

international design application. Any

correspondence not containing such identiﬁcation

will be returned to the sender where a return address

is available. The returned correspondence will be

accompanied with a cover letter, which will indicate

to the sender that if the returned correspondence is

resubmitted to the Patent and Trademark Ofﬁce

within two weeks of the mail date on the cover letter,

the original date of receipt of the correspondence

will be considered by the Patent and Trademark

Ofﬁce as the date of receipt of the correspondence.

Applicants may use either the Certiﬁcate of Mailing

or Transmission procedure under § 1.8 or the

Priority Mail Express® procedure under § 1.10 for

resubmissions of returned correspondence if they

desire to have the beneﬁt of the date of deposit in

the United States Postal Service. If the returned

correspondence is not resubmitted within the

two-week period, the date of receipt of the

resubmission will be considered to be the date of

receipt of the correspondence. The two-week period

to resubmit the returned correspondence will not be

extended. In addition to the application number, all

correspondence directed to the Patent and

Trademark Ofﬁce concerning applications for patent

should also state the name of the ﬁrst listed inventor,

the title of the invention, the date of ﬁling the same,

and if known, the group art unit or other unit within

the Patent and Trademark Ofﬁce responsible for

considering the correspondence and the name of the

examiner or other person to which it has been

assigned.

(b) When the letter concerns a patent other than

for purposes of paying a maintenance fee, it should

state the number and date of issue of the patent, the

name of the patentee, and the title of the invention.

For letters concerning payment of a maintenance

fee in a patent, see the provisions of § 1.366(c).

before the Patent Trial and Appeal Board (part 42

of this title) are governed by § 42.6 of this title.

(d) A letter relating to a reexamination or

supplemental examination proceeding should

identify it as such by the number of the patent

undergoing reexamination or supplemental

examination, the request control number assigned

to such proceeding, and, if known, the group art unit

and name of the examiner to which it been assigned.

(e) [Reserved]

(f) When a paper concerns a provisional

application, it should identify the application as such

and include the application number.

[24 FR 10332, Dec. 22, 1959; 46 FR 29181, May

29, 1981; para. (a), 49 FR 552, Jan. 4, 1984, effective

Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984,

effective Feb. 11, 1985; paras. (a) & (b), 53 FR 47807,

Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised,

58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993;

para. (f) added, 61 FR 42790, Aug. 19, 1996, effective

Sept. 23, 1996; para. (a) amended, 61 FR 56439, Nov. 1,

1996, effective Dec. 2, 1996; para. (c) revised, 64 FR

48900, Sept. 8, 1999, effective Oct. 30, 1999; section

heading revised, para. (c) removed and reserved, 68 FR

48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (e)

removed and reserved, 69 FR 49959, Aug. 12, 2004,

effective Sept. 13, 2004; para. (c) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012; para. (a) revised,

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012;

para. (d) revised, 78 FR 62368, Oct. 21, 2013, effective

Dec. 18, 2013; para. (a) revised, 79 FR 63036, Oct. 22,

2014, effective Oct. 22, 2014; para. (a) revised, 80 FR

17918, Apr. 2, 2015, effective May 13, 2015]

§ 1.6 Receipt of correspondence.

(a) Date of receipt and Priority Mail Express®

date of deposit. Correspondence received in the

Patent and Trademark Ofﬁce is stamped with the

date of receipt except as follows:

(1) The Patent and Trademark Ofﬁce is not

open for the ﬁling of correspondence on any day

that is a Saturday, Sunday, or Federal holiday within

R-16January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.5

the District of Columbia. Except for correspondence

transmitted by facsimile under paragraph (a)(3) of

this section, or ﬁled electronically under paragraph

(a)(4) of this section, no correspondence is received

in the Ofﬁce on Saturdays, Sundays, or Federal

holidays within the District of Columbia.

(2) Correspondence ﬁled in accordance with

§ 1.10 will be stamped with the date of deposit as

Priority Mail Express® with the United States Postal

Service.

(3) Correspondence transmitted by facsimile

to the Patent and Trademark Ofﬁce will be stamped

with the date on which the complete transmission

is received in the Patent and Trademark Ofﬁce

unless that date is a Saturday, Sunday, or Federal

holiday within the District of Columbia, in which

case the date stamped will be the next succeeding

day which is not a Saturday, Sunday, or Federal

holiday within the District of Columbia.

(4) Correspondence may be submitted using

the Ofﬁce electronic ﬁling system only in

accordance with the Ofﬁce electronic ﬁling system

requirements. Correspondence submitted to the

Ofﬁce by way of the Ofﬁce electronic ﬁling system

will be accorded a receipt date, which is the date

the correspondence is received at the correspondence

address for the Ofﬁce set forth in § 1.1 when it was

ofﬁcially submitted.

(b) [Reserved]

addition to being mailed, correspondence may be

delivered by hand during hours the Ofﬁce is open

to receive correspondence.

(d) Facsimile transmission. Except in the cases

enumerated below, correspondence, including

authorizations to charge a deposit account, may be

transmitted by facsimile. The receipt date accorded

to the correspondence will be the date on which the

complete transmission is received in the United

States Patent and Trademark Ofﬁce, unless that date

is a Saturday, Sunday, or Federal holiday within the

District of Columbia. See paragraph (a)(3) of this

section. To facilitate proper processing, each

transmission session should be limited to

correspondence to be ﬁled in a single application

or other proceeding before the United States Patent

and Trademark Ofﬁce. The application number of

a patent application, the control number of a

reexamination or supplemental examination

proceeding, the interference number of an

interference proceeding, the trial number of a trial

proceeding before the Board, or the patent number

of a patent should be entered as a part of the sender’s

identiﬁcation on a facsimile cover sheet. Facsimile

transmissions are not permitted and, if submitted,

will not be accorded a date of receipt in the

following situations:

(1) Correspondence as speciﬁed in § 1.4(e),

requiring an original signature;

(2) Certiﬁed documents as speciﬁed in §

1.4(f);

(3) Correspondence that cannot receive the

beneﬁt of the certiﬁcate of mailing or transmission

as speciﬁed in § 1.8(a)(2)(i)(A) through (D), (F),

(I), and (K) and § 1.8(a)(2)(iii)(A), except that a

continued prosecution application under § 1.53(d)

may be transmitted to the Ofﬁce by facsimile;

(4) Color drawings submitted under §§ 1.81,

1.83 through 1.85, 1.152, 1.165, 1.173, 1.437, or

1.1026;

(5) A request for reexamination under §

1.510 or § 1.913, or a request for supplemental

examination under § 1.610;

(6) Correspondence to be ﬁled in an

application subject to a secrecy order under §§ 5.1

through 5.5 of this chapter and directly related to

the secrecy order content of the application;

(7) In contested cases and trials before the

Patent Trial and Appeal Board, except as the Board

may expressly authorize.

(e) [Reserved]

(f) Facsimile transmission of a patent

application under § 1.53(d). In the event that the

Ofﬁce has no evidence of receipt of an application

under § 1.53(d) (a continued prosecution

application) transmitted to the Ofﬁce by facsimile

transmission, the party who transmitted the

application under § 1.53(d) may petition the Director

to accord the application under § 1.53(d) a ﬁling

date as of the date the application under § 1.53(d)

is shown to have been transmitted to and received

in the Ofﬁce,

(1) Provided that the party who transmitted

such application under § 1.53(d):

January 2018R-17

§ 1.6CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(i) Informs the Ofﬁce of the previous

transmission of the application under § 1.53(d)

promptly after becoming aware that the Ofﬁce has

no evidence of receipt of the application under §

1.53(d);

(ii) Supplies an additional copy of the

previously transmitted application under § 1.53(d);

and

(iii) Includes a statement which attests

on a personal knowledge basis or to the satisfaction

of the Director to the previous transmission of the

application under § 1.53(d) and is accompanied by

a copy of the sending unit’s report conﬁrming

transmission of the application under § 1.53(d) or

evidence that came into being after the complete

transmission and within one business day of the

complete transmission of the application under §

1.53(d).

(2) The Ofﬁce may require additional

evidence to determine if the application under §

1.53(d) was transmitted to and received in the Ofﬁce

on the date in question.

(g) Submission of the national stage

correspondence required by § 1.495 via the Ofﬁce

electronic ﬁling system. In the event that the Ofﬁce

has no evidence of receipt of the national stage

correspondence required by § 1.495, which was

submitted to the Ofﬁce by the Ofﬁce electronic

ﬁling system, the party who submitted the

correspondence may petition the Director to accord

the national stage correspondence a receipt date as

of the date the correspondence is shown to have

been ofﬁcially submitted to the Ofﬁce.

(1) The petition of this paragraph (g) requires

that the party who submitted such national stage

correspondence:

(i) Informs the Ofﬁce of the previous

submission of the correspondence promptly after

becoming aware that the Ofﬁce has no evidence of

receipt of the correspondence under § 1.495;

(ii) Supplies an additional copy of the

previously submitted correspondence;

(iii) Includes a statement that attests on

a personal knowledge basis, or to the satisfaction of

the Director, that the correspondence was previously

ofﬁcially submitted; and

(iv) Supplies a copy of an

acknowledgment receipt generated by the Ofﬁce

electronic ﬁling system, or equivalent evidence,

conﬁrming the submission to support the statement

of paragraph (g)(1)(iii) of this section.

(2) The Ofﬁce may require additional

evidence to determine if the national stage

correspondence was submitted to the Ofﬁce on the

date in question.

[48 FR 2707, Jan. 20, 1983, effective Feb. 27,

1983; 48 FR 4285, Jan. 31, 1983; para. (a), 49 FR 552,

Jan. 4, 1984, effective Apr. 1, 1984; revised, 58 FR

54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (a)

amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2,

1996; paras. (d)(3), (d)(6) & (e) amended, para. (f) added,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para

(a)(1) revised and para. (a)(4) added, 64 FR 48900, Sept.

8, 1999, effective Oct. 30, 1999; para.(d)(9) revised, 65

FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para.

(d)(5) revised, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (b) removed and reserved and paras. (e),

(f) & (f)(1)(iii) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; paras. (a)(4), (d)(7) and (d)(8)

removed and reserved, and paras. (d), introductory text,

(d)(3), and (d)(4) revised, 68 FR 48286, Aug. 13, 2003,

effective Sept. 12, 2003; para. (d)(9) revised, 69 FR

49959, Aug. 12, 2004, effective Sept. 13, 2004; para.

(d)(4) revised and para. (e) removed and reserved, 69 FR

56481, Sept. 21, 2004, effective Sept. 21, 2004; paras.

(a)(4) & (g) added, 72 FR 2770, Jan. 23, 2007, effective

Jan. 23, 2007; para. (d)(3) revised, 77 FR 42150, July 17,

2012, effective Sept. 16, 2012; ; paras. (d) introductory

text and (d)(9) revised, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012; para. (d) revised, 78 FR 62368,

Oct. 21, 2013, effective Dec. 18, 2013; paras. (a) and

(a)(2) revised, 79 FR 63036, Oct. 22, 2014, effective Oct.

22, 2014; paras. (d)(3)-(4) and (6) revised, 80 FR 17918,

Apr. 2, 2015, effective May 13, 2015]

§ 1.7 Times for taking action; Expiration on

Saturday, Sunday or Federal holiday.

(a) Whenever periods of time are speciﬁed in

this part in days, calendar days are intended. When

the day, or the last day ﬁxed by statute or by or

under this part for taking any action or paying any

fee in the United States Patent and Trademark Ofﬁce

falls on Saturday, Sunday, or on a Federal holiday

within the District of Columbia, the action may be

taken, or the fee paid, on the next succeeding

business day which is not a Saturday, Sunday, or a

Federal holiday. See § 90.3 of this chapter for time

for appeal or for commencing civil action.

R-18January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.7

(b) If the day that is twelve months after the

ﬁling date of a provisional application under 35

U.S.C. 111(b) and §1.53(c) falls on Saturday,

Sunday, or on a Federal holiday within the District

of Columbia, the period of pendency shall be

extended to the next succeeding secular or business

day which is not a Saturday, Sunday, or a Federal

holiday.

[48 FR 2707, Jan. 20, 1983, effective Feb. 27,

1983; corrected 48 FR 4285, Jan. 31, 1983; revised, 65

FR 14865, Mar. 20, 2000, effective May 29, 2000

(adopted as ﬁnal, 65 FR 50092, Aug. 16, 2000); para. (a)

revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18,

2013]

§ 1.8 Certiﬁcate of mailing or transmission.

(a) Except in the situations enumerated in

paragraph (a)(2) of this section or as otherwise

expressly excluded in this chapter, correspondence

required to be ﬁled in the U.S. Patent and Trademark

Ofﬁce within a set period of time will be considered

as being timely ﬁled if the procedure described in

this section is followed. The actual date of receipt

will be used for all other purposes.

(1) Correspondence will be considered as

being timely ﬁled if:

(i) The correspondence is mailed or

transmitted prior to expiration of the set period of

time by being:

(A) Addressed as set out in § 1.1(a)

and deposited with the U.S. Postal Service with

sufﬁcient postage as ﬁrst class mail;

(B) Transmitted by facsimile to the

Patent and Trademark Ofﬁce in accordance with §

1.6(d); or

electronic ﬁling system in accordance with §

1.6(a)(4); and

(ii) The correspondence includes a

certiﬁcate for each piece of correspondence stating

the date of deposit or transmission. The person

signing the certiﬁcate should have reasonable basis

to expect that the correspondence would be mailed

or transmitted on or before the date indicated.

(2) The procedure described in paragraph

(a)(1) of this section does not apply to, and no

beneﬁt will be given to a Certiﬁcate of Mailing or

Transmission on, the following:

(i) Relative to Patents and Patent

Applications—

(A) The ﬁling of a national patent

application speciﬁcation and drawing or other

correspondence for the purpose of obtaining an

application ﬁling date, including a request for a

continued prosecution application under § 1.53(d);

(B) Papers ﬁled in trials before the

Patent Trial and Appeal Board, which are governed

by § 42.6(b) of this title;

before the Patent Trial and Appeal Board, which

are governed by § 41.106(f) of this title;

(D) The ﬁling of an international

application for patent;

(E) The ﬁling of correspondence in

an international application before the U.S.

Receiving Ofﬁce, the U.S. International Searching

Authority, or the U.S. International Preliminary

Examining Authority;

(F) The ﬁling of a copy of the

international application and the basic national fee

necessary to enter the national stage, as speciﬁed in

§ 1.495(b).

(G) The ﬁling of a written declaration

of abandonment under § 1.138;

(H) The ﬁling of a submission under

§ 1.217 for publication of a redacted copy of an

application;

(I) The ﬁling of a third-party

submission under § 1.290;

(J) The calculation of any period of

adjustment, as speciﬁed in § 1.703(f); and

(K) The ﬁling of an international

design application.

(ii) [Reserved]

(iii) Relative to Disciplinary

Proceedings—

(A) Correspondence ﬁled in

connection with a disciplinary proceeding under

part 11 of this chapter.

(B) [Reserved]

(b) In the event that correspondence is

considered timely ﬁled by being mailed or

transmitted in accordance with paragraph (a) of this

January 2018R-19

§ 1.8CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

section, but not received in the U.S. Patent and

Trademark Ofﬁce after a reasonable amount of time

has elapsed from the time of mailing or transmitting

of the correspondence, or after the application is

held to be abandoned, or after the proceeding is

dismissed or decided with prejudice, or the

prosecution of a reexamination proceeding is

terminated pursuant to § 1.550(d) or § 1.957(b) or

limited pursuant to § 1.957(c), or a requester paper

is refused consideration pursuant to § 1.957(a), the

correspondence will be considered timely if the party

who forwarded such correspondence:

(1) Informs the Ofﬁce of the previous

mailing or transmission of the correspondence

promptly after becoming aware that the Ofﬁce has

no evidence of receipt of the correspondence;

(2) Supplies an additional copy of the

previously mailed or transmitted correspondence

and certiﬁcate; and

(3) Includes a statement that attests on a

personal knowledge basis or to the satisfaction of

the Director to the previous timely mailing,

transmission or submission. If the correspondence

was sent by facsimile transmission, a copy of the

sending unit’s report conﬁrming transmission may

be used to support this statement. If the

correspondence was transmitted via the Ofﬁce

electronic ﬁling system, a copy of an

acknowledgment receipt generated by the Ofﬁce

electronic ﬁling system conﬁrming submission may

be used to support this statement.

to determine if the correspondence was timely ﬁled.

[41 FR 43721, Oct. 4, 1976; 43 FR 20461, May

11, 1978; para. (a). 47 FR 47381, Oct. 26, 1982, effective

Oct. 26, 1982; para. (a),48 FR 2708, Jan. 20, 1983; para.

(a) 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;

para. (a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8,

1985; 52 FR 20046, May 28, 1987; subparas.

(a)(2)(xiv)-(xvi), 54 FR 37588, Sept. 11, 1989, effective

Nov. 16, 1989; revised, 58 FR 54494, Oct. 22, 1993,

effective Nov. 22, 1993; para. (a) revised, 61 FR 56439,

Nov. 1, 1996, effective Dec. 2, 1996; paras. (a)(2)(i)(A)

& (b) revised; 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997; para. (a)(2)(i)(F) revised, 67 FR 520, Jan. 4,

2002, effective Apr. 1, 2002; para. (b)(3) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para.

(a)(2)(ii) removed and reserved, 68 FR 48286, Aug. 13,

2003, effective Sept. 12, 2003; para. (a)(2)(i)(B) removed

and reserved and para. (a)(2)(i)(C) revised, 69 FR 49959,

Aug. 12, 2004, effective Sept. 13, 2004; paras. (a) and

(b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct.

21, 2004; paras. (a)(1)(i) & (b)(3) revised, 72 FR 2770,

Jan. 23, 2007, effective Jan. 23, 2007; para. (b)

introductory text revised, 72 FR 18892, Apr. 16, 2007,

effective May 16, 2007; para. (a)(2)(iii)(A) revised, 73

FR 47650, Aug. 14, 2008, effective Sept. 15, 2008; paras.

(a)(2)(i)(C) revised and paras. (a)(2)(i)(B) and

(a)(2)(i)(G)-(J) added, 77 FR 42150, July 17, 2012,

effective Sept. 16, 2012; paras. (a)(2)(i)(I)-(J) revised

and para. (a)(2)(i)(K) added, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

§ 1.9 Deﬁnitions.

(a)(1) A national application as used in this

chapter means either a U.S. application for patent

which was ﬁled in the Ofﬁce under 35 U.S.C. 111,

an international application ﬁled under the Patent

Cooperation Treaty in which the basic national fee

under 35 U.S.C. 41(a)(1)(F) has been paid, or an

international design application ﬁled under the

Hague Agreement in which the Ofﬁce has received

a copy of the international registration pursuant to

Hague Agreement Article 10.

(2) A provisional application as used in this

chapter means a U.S. national application for patent

ﬁled in the Ofﬁce under 35 U.S.C. 111(b).

(3) A nonprovisional application as used in

this chapter means either a U.S. national application

for patent which was ﬁled in the Ofﬁce under 35

U.S.C. 111(a), an international application ﬁled

under the Patent Cooperation Treaty in which the

basic national fee under 35 U.S.C. 41(a)(1)(F) has

been paid, or an international design application

ﬁled under the Hague Agreement in which the

Ofﬁce has received a copy of the international

registration pursuant to Hague Agreement Article

10.

(b) An international application as used in this

chapter means an international application for patent

ﬁled under the Patent Cooperation Treaty prior to

entering national processing at the Designated Ofﬁce

stage.

chapter means an application for patent which has

been published under 35 U.S.C. 122(b).

(d)(1) The term inventor or inventorship as

used in this chapter means the individual or, if a

joint invention, the individuals collectively who

R-20January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.9

invented or discovered the subject matter of the

invention.

(2) The term joint inventor or coinventor as

used in this chapter means any one of the individuals

who invented or discovered the subject matter of a

joint invention.

(e) The term joint research agreement as used

in this chapter means a written contract, grant, or

cooperative agreement entered into by two or more

persons or entities for the performance of

experimental, developmental, or research work in

the ﬁeld of the claimed invention.

(f) The term claimed invention as used in this

chapter means the subject matter deﬁned by a claim

in a patent or an application for a patent.

(g) For deﬁnitions in Patent Trial and Appeal

Board proceedings, see parts 41 and 42 of this title.

(h) A Federal holiday within the District of

Columbia as used in this chapter means any day,

except Saturdays and Sundays, when the Patent and

Trademark Ofﬁce is ofﬁcially closed for business

for the entire day.

(i) National security classiﬁed as used in this

chapter means speciﬁcally authorized under criteria

established by an Act of Congress or Executive

Order to be kept secret in the interest of national

defense or foreign policy and, in fact, properly

classiﬁed pursuant to such Act of Congress or

Executive Order.

(j) Director as used in this chapter, except for

part 11 of this chapter, means the Under Secretary

of Commerce for Intellectual Property and Director

of the United States Patent and Trademark Ofﬁce.

(k) Paper as used in this chapter means a

document that may exist in electronic form, or in

physical form, and therefore does not necessarily

imply physical sheets of paper.

(l) Hague Agreement as used in this chapter

means the Geneva Act of the Hague Agreement

Concerning the International Registration of

Industrial Designs adopted at Geneva, Switzerland,

on July 2, 1999, and Hague Agreement Article as

used in this chapter means an Article under the

Hague Agreement.

(m) Hague Agreement Regulations as used in

this chapter means the Common Regulations Under

the 1999 Act and the 1960 Act of the Hague

Agreement, and Hague Agreement Rule as used in

this chapter means one of the Hague Agreement

Regulations.

(n) An international design application as used

in this chapter means an application for international

registration of a design ﬁled under the Hague

Agreement. Unless otherwise clear from the

wording, reference to "design application" or

"application for a design patent" in this chapter

includes an international design application that

designates the United States.

[43 FR 20461, May 11, 1978; 47 FR 40139, Sept.

10, 1982, effective Oct. 1, 1982; 47 FR 43275, Sept. 30,

1982, effective Oct. 1, 1982; para. (d), 49 FR 34724, Aug.

31, 1984, effective Nov. 1, 1984; para. (g), 49 FR 48416,

Dec. 12, 1984, effective Feb. 11, 1985; para. (d) revised,

58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; para.

(a) amended, 60 FR 20195, Apr. 25, 1995, effective June

8, 1995; para. (h) added, 61 FR 56439, Nov. 1, 1996,

effective Dec. 2, 1996; paras. (d) & (f) revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (c)-(f)

removed and reserved and para. (i) added, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised,

65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000;

para. (j) added, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; para. (k) added, 68 FR 38611, June 30,

2003, effective July 30, 2003; para. (g) revised, 69 FR

49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (j)

revised, 73 FR 47650, Aug. 14, 2008, effective Sept. 15,

2008; para. (g) revised, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012; paras. (a) and (b) revised, 77

FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; paras.

(d)-(f) added, 78 FR 11024, Feb. 14, 2013, effective Mar.

16, 2013; paras. (a)(1) and (3) revised and paras. (l)-(n)

added, 80 FR 17918, Apr. 2, 2015, effective May 13,

2015]

§ 1.10 Filing of correspondence by Priority

Mail Express®.

(a)(1) Any correspondence received by the

U.S. Patent and Trademark Ofﬁce (USPTO) that

was delivered by the Priority Mail Express® Post

Ofﬁce to Addressee service of the United States

Postal Service (USPS) will be considered ﬁled with

the USPTO on the date of deposit with the USPS.

(2) The date of deposit with USPS is shown

by the “date accepted” on the Priority Mail

Express® label or other ofﬁcial USPS notation. If

the USPS deposit date cannot be determined, the

January 2018R-21

§ 1.10CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

correspondence will be accorded the USPTO receipt

date as the ﬁling date. See § 1.6(a).

(b) Correspondence should be deposited directly

with an employee of the USPS to ensure that the

person depositing the correspondence receives a

legible copy of the Priority Mail Express® mailing

label with the “date accepted” clearly marked.

Persons dealing indirectly with the employees of

the USPS (such as by deposit in a Priority Mail

Express® drop box) do so at the risk of not receiving

a copy of the Priority Mail Express® mailing label

with the desired “date accepted” clearly marked.

The paper(s) or fee(s) that constitute the

correspondence should also include the Priority Mail

Express® mailing label number thereon. See

paragraphs (c), (d) and (e) of this section.

section that was received by the Ofﬁce and delivered

by the Priority Mail Express® Post Ofﬁce to

Addressee service of the USPS, who can show that

there is a discrepancy between the ﬁling date

accorded by the Ofﬁce to the correspondence and

the date of deposit as shown by the “date accepted”

on the Priority Mail Express® mailing label or other

ofﬁcial USPS notation, may petition the Director to

accord the correspondence a ﬁling date as of the

“date accepted” on the Priority Mail Express®

mailing label or other ofﬁcial USPS notation,

provided that:

(1) The petition is ﬁled promptly after the

person becomes aware that the Ofﬁce has accorded,

or will accord, a ﬁling date other than the USPS

deposit date;

(2) The number of the Priority Mail

Express® mailing label was placed on the paper(s)

or fee(s) that constitute the correspondence prior to

the original mailing by Priority Mail Express®; and

(3) The petition includes a true copy of the

Priority Mail Express® mailing label showing the

“date accepted,” and of any other ofﬁcial notation

by the USPS relied upon to show the date of deposit.

(d) Any person ﬁling correspondence under this

section that was received by the Ofﬁce and delivered

by the Priority Mail Express® Post Ofﬁce to

Addressee service of the USPS, who can show that

the “date accepted” on the Priority Mail Express®

mailing label or other ofﬁcial notation entered by

the USPS was incorrectly entered or omitted by the

USPS, may petition the Director to accord the

correspondence a ﬁling date as of the date the

correspondence is shown to have been deposited

with the USPS, provided that:

(1) The petition is ﬁled promptly after the

person becomes aware that the Ofﬁce has accorded,

or will accord, a ﬁling date based upon an incorrect

entry by the USPS;

(2) The number of the Priority Mail

Express® mailing label was placed on the paper(s)

or fee(s) that constitute the correspondence prior to

the original mailing by Priority Mail Express®; and

(3) The petition includes a showing which

establishes, to the satisfaction of the Director, that

the requested ﬁling date was the date the

correspondence was deposited in the Priority Mail

Express® Post Ofﬁce to Addressee service prior to

the last scheduled pickup for that day. Any showing

pursuant to this paragraph must be corroborated by

evidence from the USPS or that came into being

after deposit and within one business day of the

deposit of the correspondence in the Priority Mail

Express® Post Ofﬁce to Addressee service of the

USPS.

(e) Any person mailing correspondence

addressed as set out in § 1.1(a) to the Ofﬁce with

sufﬁcient postage utilizing the Priority Mail

Express® Post Ofﬁce to Addressee service of the

USPS but not received by the Ofﬁce, may petition

the Director to consider such correspondence ﬁled

in the Ofﬁce on the USPS deposit date, provided

that:

(1) The petition is ﬁled promptly after the

person becomes aware that the Ofﬁce has no

evidence of receipt of the correspondence;

(2) The number of the Priority Mail

Express® mailing label was placed on the paper(s)

or fee(s) that constitute the correspondence prior to

the original mailing by Priority Mail Express®;

(3) The petition includes a copy of the

originally deposited paper(s) or fee(s) that constitute

the correspondence showing the number of the

R-22January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.10

Priority Mail Express® mailing label thereon, a copy

of any returned postcard receipt, a copy of the

Priority Mail Express® mailing label showing the

“date accepted,” a copy of any other ofﬁcial notation

by the USPS relied upon to show the date of deposit,

and, if the requested ﬁling date is a date other than

the “date accepted” on the Priority Mail Express®

mailing label or other ofﬁcial notation entered by

the USPS, a showing pursuant to paragraph (d)(3)

of this section that the requested ﬁling date was the

date the correspondence was deposited in the

Priority Mail Express® Post Ofﬁce to Addressee

service prior to the last scheduled pickup for that

day; and

(4) The petition includes a statement which

establishes, to the satisfaction of the Director, the

original deposit of the correspondence and that the

copies of the correspondence, the copy of the

Priority Mail Express® mailing label, the copy of

any returned postcard receipt, and any ofﬁcial

notation entered by the USPS are true copies of the

originally mailed correspondence, original Priority

Mail Express® mailing label, returned postcard

receipt, and ofﬁcial notation entered by the USPS.

(f) The Ofﬁce may require additional evidence

to determine if the correspondence was deposited

as Priority Mail Express® with the USPS on the

date in question.

(g) Any person who mails correspondence

addressed as set out in § 1.1(a) to the Ofﬁce with

sufﬁcient postage utilizing the Priority Mail

Express® Post Ofﬁce to Addressee service of the

USPS, but has the correspondence returned by the

USPS due to an interruption or emergency in

Priority Mail Express® service, may petition the

Director to consider such correspondence as ﬁled

on a particular date in the Ofﬁce, provided that:

(1) The petition is ﬁled promptly after the

person becomes aware of the return of the

correspondence;

(2) The number of the Priority Mail

Express® mailing label was placed on the paper(s)

or fee(s) that constitute the correspondence prior to

the original mailing by Priority Mail Express®;

(3) The petition includes the original

correspondence or a copy of the original

correspondence showing the number of the Priority

Mail Express® mailing label thereon and a copy of

the Priority Mail Express® mailing label showing

the “date accepted”; and

(4) The petition includes a statement which

establishes, to the satisfaction of the Director, the

original deposit of the correspondence and that the

correspondence or copy of the correspondence is

the original correspondence or a true copy of the

correspondence originally deposited with the USPS

on the requested ﬁling date. The Ofﬁce may require

additional evidence to determine if the

correspondence was returned by the USPS due to

an interruption or emergency in Priority Mail

Express® service.

(h) Any person who attempts to mail

correspondence addressed as set out in § 1.1 (a) to

the Ofﬁce with sufﬁcient postage utilizing the

Priority Mail Express® Post Ofﬁce to Addressee

service of the USPS, but has the correspondence

refused by an employee of the USPS due to an

interruption or emergency in Priority Mail Express®

service, may petition the Director to consider such

correspondence as ﬁled on a particular date in the

Ofﬁce, provided that:

(1) The petition is ﬁled promptly after the

person becomes aware of the refusal of the

correspondence;

(2) The number of the Priority Mail

Express® mailing label was placed on the paper(s)

or fee(s) that constitute the correspondence prior to

the attempted mailing by Priority Mail Express®;

(3) The petition includes the original

correspondence or a copy of the original

correspondence showing the number of the Priority

Mail Express® mailing label thereon; and

(4) The petition includes 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 copy of the correspondence is

the original correspondence or a true copy of the

correspondence originally attempted to be deposited

January 2018R-23

§ 1.10CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

with the USPS on the requested ﬁling date. The

Ofﬁce may require additional evidence to determine

if the correspondence was refused by an employee

of the USPS due to an interruption or emergency in

Priority Mail Express® service.

(i) Any person attempting to ﬁle correspondence

under this section that was unable to be deposited

with the USPS due to an interruption or emergency

in Priority Mail Express® 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, provided that:

(1) The petition is ﬁled in a manner

designated by the Director promptly after the person

becomes aware of the designated interruption or

emergency in Priority Mail Express® service;

(2) The petition includes the original

correspondence or a copy of the original

correspondence; and

(3) The petition includes 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 Priority Mail Express® 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.

[48 FR 2708, Jan. 20, 1983, added effective Feb.

27, 1983; 48 FR 4285, Jan. 31, 1983, paras. (a) & (c), 49

FR 552, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a)-(c)

revised and paras. (d) - (f) added, 61 FR 56439, Nov. 1,

1996, effective Dec. 2, 1996; paras. (d) & (e) revised, 62

FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

(a) revised, 67 FR 36099, May 23, 2002, effective June

24, 2002; paras. (c), (d), (d)(3), (e) & (e)(4) revised, 68

FR 14332, Mar. 25, 2003, effective May 1, 2003; para.

(a)(1) revised, 68 FR 48286, Aug. 13, 2003, effective

Sept. 12, 2003; paras. (g) through (i) added, 69 FR 56481,

Sept. 21, 2004, effective Sept. 21, 2004; revised, 79 FR

63036, Oct. 22, 2014, effective Oct. 22, 2014;]

RECORDS AND FILES OF THE PATENT

AND TRADEMARK OFFICE

§ 1.11 Files open to the public.

(a) The speciﬁcation, drawings, and all papers

relating to the ﬁle of: A published application; a

patent; or a statutory invention registration are open

to inspection by the public, and copies may be

obtained upon the payment of the fee set forth in §

1.19(b)(2). If an application was published in

redacted form pursuant to § 1.217, the complete ﬁle

wrapper and contents of the patent application will

not be available if: The requirements of paragraphs

(d)(1), (d)(2), and (d)(3) of § 1.217 have been met

in the application; and the application is still

pending. See § 2.27 of this title for trademark ﬁles.

(b) All reissue applications, all applications in

which the Ofﬁce has accepted a request to open the

complete application to inspection by the public,

and related papers in the application ﬁle, are open

to inspection by the public, and copies may be

furnished upon paying the fee therefor. The ﬁling

of reissue applications, other than continued

prosecution applications under § 1.53(d) of reissue

applications, will be announced in the Ofﬁcial

Gazette. The announcement shall include at least

the ﬁling date, reissue application and original patent

numbers, title, class and subclass, name of the

inventor, name of the owner of record, name of the

attorney or agent of record, and examining group

to which the reissue application is assigned.

the requirements of § 1.510 or § 1.915 have been

satisﬁed will be announced in the Ofﬁcial Gazette.

Any reexaminations at the initiative of the Director

pursuant to § 1.520 will also be announced in the

Ofﬁcial Gazette. The announcement shall include

at least the date of the request, if any, the

reexamination request control number or the

Director initiated order control number, patent

number, title, class and subclass, name of the

inventor, name of the patent owner of record, and

the examining group to which the reexamination is

assigned.

(d) All papers or copies thereof relating to a

reexamination proceeding which have been entered

of record in the patent or reexamination ﬁle are open

R-24January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.11

to inspection by the general public, and copies may

be furnished upon paying the fee therefor.

(e) Except as prohibited in § 41.6(b), § 42.14

or § 42.410(b), the ﬁle of any interference or trial

before the Patent Trial and Appeal Board is open to

public inspection and copies of the ﬁle may be

obtained upon payment of the fee therefor.

[42 FR 5593, Jan. 28, 1977; 43 FR 28477, June

30, 1978; 46 FR 29181, May 29, 1981, para. (c), 47 FR

41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (a),

49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;

paras. (a), (b) and (e), 50 FR 9278, Mar. 7, 1985, effective

May 8, 1985; para. (e) revised, 60 FR 14488, Mar. 17,

1995, effective Mar. 17, 1995; para. (b) revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)

revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29,

2000; para. (c) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; para. (e) revised, 69 FR 49959,

Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised,

70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005;

para. (c) revised, 71 FR 44219, Aug. 4, 2006, effective

Aug. 4, 2006; para. (e) revised, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012]

§ 1.12 Assignment records open to public

inspection.

[Editor Note: Paras. (b) and (c)(2) below include

changes applicable only to patent applications ﬁled under

35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

(a)(1) Separate assignment records are

maintained in the United States Patent and

Trademark Ofﬁce for patents and trademarks. The

assignment records, relating to original or reissue

patents, including digests and indexes (for

assignments recorded on or after May 1, 1957), and

published patent applications are open to public

inspection at the United States Patent and Trademark

Ofﬁce, and copies of patent assignment records may

be obtained upon request and payment of the fee set

forth in § 1.19 of this chapter. See § 2.200 of this

chapter regarding trademark assignment records.

(2) All records of assignments of patents

recorded before May 1, 1957, are maintained by the

National Archives and Records Administration

(NARA). The records are open to public inspection.

Certiﬁed and uncertiﬁed copies of those assignment

records are provided by NARA upon request and

payment of the fees required by NARA.

(b) Assignment records, digests, and indexes

relating to any pending or abandoned patent

application, which is open to the public pursuant to

§ 1.11 or for which copies or access may be supplied

pursuant to § 1.14, are available to the public.

Copies of any assignment records, digests, and

indexes that are not available to the public shall be

obtainable only upon written authority of an

inventor, the applicant, the assignee or an assignee

of an undivided part interest, or a patent practitioner

of record, or upon a showing that the person seeking

such information is a bona ﬁde prospective or actual

purchaser, mortgagee, or licensee of such

application, unless it shall be necessary to the proper

conduct of business before the Ofﬁce or as provided

in this part.

seeking copies of any assignment records of any

pending or abandoned patent application preserved

in conﬁdence under § 1.14, or any information with

respect thereto, must:

(1) Be in the form of a petition including the

fee set forth in § 1.17(g); or

(2) Include written authority granting access

to the member of the public to the particular

assignment records from an inventor, the applicant,

the assignee or an assignee of an undivided part

interest, or a patent practitioner of record.

(d) An order for a copy of an assignment or

other document should identify the reel and frame

number where the assignment or document is

recorded. If a document is identiﬁed without

specifying its correct reel and frame, an extra charge

as set forth in § 1.21(j) will be made for the time

consumed in making a search for such assignment.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989,

effective Apr. 17, 1989; paras. (a) and (d), 56 FR 65142,

Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and

(d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992;

para. (a)(2) added, 57 FR 29641, July 6, 1992, effective

Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25,

1995, effective June 8, 1995; para. (c) amended, 61 FR

42790, Aug. 19, 1996, effective Sept. 23, 1996; para.

(c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; paras. (a)(1) and (b) revised, 65 FR 57024,

Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and

(a)(2) revised, 68 FR 48286, Aug. 13, 2003, effective

Sept. 12, 2003; para. (b) revised, 69 FR 29865, May 26,

2004, effective June 25, 2004; para. (c)(1) revised, 69

FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras.

(b) and (c)(2) revised, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012]

January 2018R-25

§ 1.12CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

[*The changes to paras. (b) and (c)(2) effective

Sept. 16, 2012 are applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after Sept. 16,

2012. See § 1.12 (pre-AIA) for paras. (b) and (c)(2)

otherwise in effect.]

§ 1.12 (pre-AIA) Assignment records open

to public inspection.

[Editor Note: Applicable to patent applications

ﬁled before September 16, 2012*]

(a)(1) Separate assignment records are

maintained in the United States Patent and

Trademark Ofﬁce for patents and trademarks. The

assignment records, relating to original or reissue

patents, including digests and indexes (for

assignments recorded on or after May 1, 1957), and

published patent applications are open to public

inspection at the United States Patent and Trademark

Ofﬁce, and copies of patent assignment records may

be obtained upon request and payment of the fee set

forth in § 1.19 of this chapter. See § 2.200 of this

chapter regarding trademark assignment records.

(2) All records of assignments of patents

recorded before May 1, 1957, are maintained by the

National Archives and Records Administration

(NARA). The records are open to public inspection.

Certiﬁed and uncertiﬁed copies of those assignment

records are provided by NARA upon request and

payment of the fees required by NARA.

(b) Assignment records, digests, and indexes

relating to any pending or abandoned patent

application, which is open to the public pursuant to

§ 1.11 or for which copies or access may be supplied

pursuant to § 1.14, are available to the public.

Copies of any assignment records, digests, and

indexes that are not available to the public shall be

obtainable only upon written authority of the

applicant or applicant’s assignee or patent attorney

or patent agent or upon a showing that the person

seeking such information is a bona ﬁde prospective

or actual purchaser, mortgagee, or licensee of such

application, unless it shall be necessary to the proper

conduct of business before the Ofﬁce or as provided

in this part.

seeking copies of any assignment records of any

pending or abandoned patent application preserved

in conﬁdence under § 1.14, or any information with

respect thereto, must:

(1) Be in the form of a petition including the

fee set forth in § 1.17(g); or

(2) Include written authority granting access

to the member of the public to the particular

assignment records from the applicant or applicant’s

assignee or attorney or agent of record.

(d) An order for a copy of an assignment or

other document should identify the reel and frame

number where the assignment or document is

recorded. If a document is identiﬁed without

specifying its correct reel and frame, an extra charge

as set forth in § 1.21(j) will be made for the time

consumed in making a search for such assignment.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; paras. (a) and (c), 54 FR 6893, Feb. 15, 1989,

effective Apr. 17, 1989; paras. (a) and (d), 56 FR 65142,

Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)(1) and

(d), 57 FR 29641, July 6, 1992, effective Sept. 4, 1992;

para. (a)(2) added, 57 FR 29641, July 6, 1992, effective

Sept. 4, 1992; para. (c) amended, 60 FR 20195, Apr. 25,

1995, effective June 8, 1995; para. (c) amended, 61 FR

42790, Aug. 19, 1996, effective Sept. 23, 1996; para.

(c)(1) amended, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; paras. (a)(1) and (b) revised, 65 FR 57024,

Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)(1) and

(a)(2) revised, 68 FR 48286, Aug. 13, 2003, effective

Sept. 12, 2003; para. (b) revised, 69 FR 29865, May 26,

2004, effective June 25, 2004; para. (c)(1) revised, 69

FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]

[*See § 1.12 for more information and the current

rule, including paras. (b) and (c)(2) applicable to

applications ﬁled on or after Sept. 16, 2012]

§ 1.13 Copies and certiﬁed copies.

(a) Non-certiﬁed copies of patents, and patent

application publications and of any records, books,

papers, or drawings within the jurisdiction of the

United States Patent and Trademark Ofﬁce and open

to the public, will be furnished by the United States

Patent and Trademark Ofﬁce to any person, and

copies of other records or papers will be furnished

to persons entitled thereto, upon payment of the

appropriate fee. See § 2.201 of this chapter regarding

copies of trademark records.

(b) Certiﬁed copies of patents, patent application

publications, and trademark registrations and of any

records, books, papers, or drawings within the

jurisdiction of the United States Patent and

Trademark Ofﬁce and open to the public or persons

entitled thereto will be authenticated by the seal of

R-26January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.12 (pre-AIA)

the United States Patent and Trademark Ofﬁce and

certiﬁed by the Director, or in his or her name, upon

payment of the fee for the certiﬁed copy.

[Revised, 58 FR 54504, Oct. 22, 1993, effective

Jan. 3, 1994; revised, 65 FR 57024, Sept. 20, 2000,

effective Nov. 29, 2000; para. (b) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; revised, 68 FR

48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b)

revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21,

2004]

§ 1.14 Patent applications preserved in

conﬁdence.

[Editor Note: Applicable to patent applications

ﬁled on or after September 16, 2012*]

(a) Conﬁdentiality of patent application

information. Patent applications that have not been

published under 35 U.S.C. 122(b) are generally

preserved in conﬁdence pursuant to 35 U.S.C.

122(a). Information concerning the ﬁling, pendency,

or subject matter of an application for patent,

including status information, and access to the

application, will only be given to the public as set

forth in § 1.11 or in this section.

(1) Records associated with patent

applications (see paragraph (g) of this section for

international applications and paragraph (j) of this

section for international design applications) may

be available in the following situations:

(i) Patented applications and statutory

invention registrations. The ﬁle of an application

that has issued as a patent or published as a statutory

invention registration is available to the public as

set forth in § 1.11(a). A copy of the patent

application-as-ﬁled, the ﬁle contents of the

application, or a speciﬁc document in the ﬁle of

such an application may be provided upon request

and payment of the appropriate fee set forth in §

1.19(b).

(ii) Published abandoned applications.

The ﬁle of an abandoned published application is

available to the public as set forth in § 1.11(a). A

copy of the application-as-ﬁled, the ﬁle contents of

the published application, or a speciﬁc document in

the ﬁle of the published application may be provided

to any person upon request and payment of the

appropriate fee set forth in § 1.19(b).

(iii) Published pending applications. A

copy of the application-as-ﬁled, the ﬁle contents of

the application, or a speciﬁc document in the ﬁle of

a pending published application may be provided

to any person upon request and payment of the

appropriate fee set forth in § 1.19(b). If a redacted

copy of the application was used for the patent

application publication, the copy of the speciﬁcation,

drawings, and papers may be limited to a redacted

copy. The Ofﬁce will not provide access to the paper

ﬁle of a pending application that has been published,

except as provided in paragraph (c) or (i) of this

section.

(iv) Unpublished abandoned

applications (including provisional applications)

that are identiﬁed or relied upon. The ﬁle contents

of an unpublished, abandoned application may be

made available to the public if the application is

identiﬁed in a U.S. patent, a statutory invention

registration, a U.S. patent application publication,

an international publication of an international

application under PCT Article 21(2), or a publication

of an international registration under Hague

Agreement Article 10(3) of an international design

application designating the United States. An

application is considered to have been identiﬁed in

a document, such as a patent, when the application

number or serial number and ﬁling date, ﬁrst named

inventor, title, and ﬁling date or other application

speciﬁc information are provided in the text of the

patent, but not when the same identiﬁcation is made

in a paper in the ﬁle contents of the patent and is

not included in the printed patent. Also, the ﬁle

contents may be made available to the public, upon

a written request, if beneﬁt of the abandoned

application is claimed under 35 U.S.C. 119(e), 120,

121, 365(c), or 386(c) in an application that has

issued as a U.S. patent, or has published as a

statutory invention registration, a U.S. patent

application publication, an international publication

of an international application under PCT Article

21(2), or a publication of an international

registration under Hague Agreement Article 10(3).

A copy of the application-as-ﬁled, the ﬁle contents

of the application, or a speciﬁc document in the ﬁle

of the application may be provided to any person

upon written request and payment of the appropriate

fee (§ 1.19(b)).

(v) Unpublished pending applications

(including provisional applications) whose beneﬁt

January 2018R-27

§ 1.14CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

is claimed. A copy of the ﬁle contents of an

unpublished pending application may be provided

to any person, upon written request and payment of

the appropriate fee (§ 1.19(b)), if the beneﬁt of the

application is claimed under 35 U.S.C. 119(e), 120,

121, 365(c), or 386(c) in an application that has

issued as a U.S. patent, or in an application that has

published as a statutory invention registration, a

U.S. patent application publication, an international

publication of an international application under

PCT Article 21(2), or a publication of an

international registration under Hague Agreement

Article 10(3). A copy of the application-as-ﬁled or

a speciﬁc document in the ﬁle of the pending

application may also be provided to any person upon

written request and payment of the appropriate fee

(§ 1.19(b)). The Ofﬁce will not provide access to

the paper ﬁle of a pending application, except as

provided in paragraph (c) or (i) of this section.

(vi) Unpublished pending applications

(including provisional applications) that are

incorporated by reference or otherwise identiﬁed.

A copy of the application as originally ﬁled of an

unpublished pending application may be provided

to any person, upon written request and payment of

the appropriate fee (§ 1.19(b)), if the application is

incorporated by reference or otherwise identiﬁed in

a U.S. patent, a statutory invention registration, a

U.S. patent application publication, an international

publication of an international application under

PCT Article 21(2), or a publication of an

international registration under Hague Agreement

Article 10(3) of an international design application

designating the United States. The Ofﬁce will not

provide access to the paper ﬁle of a pending

application, except as provided in paragraph (c) or

(i) of this section.

(vii) When a petition for access or a

power to inspect is required. Applications that were

not published or patented, that are not the subject

of a beneﬁt claim under 35 U.S.C. 119(e), 120, 121,

365(c), or 386(c) in an application that has issued

as a U.S. patent, an application that has published

as a statutory invention registration, a U.S. patent

application publication, an international publication

of an international application under PCT Article

21(2), or a publication of an international

registration under Hague Agreement Article 10(3),

or are not identiﬁed in a U.S. patent, a statutory

invention registration, a U.S. patent application

publication, an international publication of an

international application under PCT Article 21(2),

or a publication of an international registration under

Hague Agreement Article 10(3) of an international

design application designating the United States,

are not available to the public. If an application is

identiﬁed in the ﬁle contents of another application,

but not the published patent application or patent

itself, a granted petition for access (see paragraph

(i)) or a power to inspect (see paragraph (c) of this

section) is necessary to obtain the application, or a

copy of the application.

(2) Information concerning a patent

application may be communicated to the public if

the patent application is identiﬁed in a published

patent document or in an application as set forth in

paragraphs (a)(1)(i) through (a)(1)(vi) of this section.

The information that may be communicated to the

public (i.e., status information) includes:

(i) Whether the application is pending,

abandoned, or patented;

(ii) Whether the application has been

published under 35 U.S.C. 122(b);

(iii) The application “numerical

identiﬁer” which may be:

(A) The eight-digit application

number (the two-digit series code plus the six-digit

serial number); or

(B) The six-digit serial number plus

any one of the ﬁling date of the national application,

the international ﬁling date, or date of entry into the

national stage; and

(iv) Whether another application claims

the beneﬁt of the application (i.e., whether there are

any applications that claim the beneﬁt of the ﬁling

date under 35 U.S.C. 119(e), 120, 121, 365, or 386

of the application), and if there are any such

applications, the numerical identiﬁer of the

application, the speciﬁed relationship between the

applications (e.g., continuation), whether the

application is pending, abandoned or patented, and

whether the application has been published under

35 U.S.C. 122(b).

(b) Electronic access to an application. Where

a copy of the application ﬁle or access to the

application may be made available pursuant to this

section, the Ofﬁce may at its discretion provide

access to only an electronic copy of the

R-28January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.14

speciﬁcation, drawings, and ﬁle contents of the

application.

application. Access to an application may be

provided to any person if the application ﬁle is

available, and the application contains written

authority (e.g., a power to inspect) granting access

to such person. The written authority must be signed

by:

(1) The applicant;

(2) A patent practitioner of record;

(3) The assignee or an assignee of an

undivided part interest;

(4) The inventor or a joint inventor; or

(5) A registered attorney or agent named in

the papers accompanying the application papers

ﬁled under § 1.53 or the national stage documents

ﬁled under § 1.495, if a power of attorney has not

been appointed under § 1.32.

(d) Applications reported to Department of

Energy. Applications for patents which appear to

disclose, purport to disclose or do disclose

inventions or discoveries relating to atomic energy

are reported to the Department of Energy, which

Department will be given access to the applications.

Such reporting does not constitute a determination

that the subject matter of each application so

reported is in fact useful or is an invention or

discovery, or that such application in fact discloses

subject matter in categories speciﬁed by 42 U.S.C.

2181(c) and (d).

(e) Decisions by the Director. Any decision by

the Director that would not otherwise be open to

public inspection may be published or made

available for public inspection if:

(1) The Director believes the decision

involves an interpretation of patent laws or

regulations that would be of precedential value; and

(2) The applicant is given notice and an

opportunity to object in writing within two months

on the ground that the decision discloses a trade

secret or other conﬁdential information. Any

objection must identify the deletions in the text of

the decision considered necessary to protect the

information, or explain why the entire decision must

be withheld from the public to protect such

information. An applicant or party will be given

time, not less than twenty days, to request

reconsideration and seek court review before any

portions of a decision are made public under this

paragraph over his or her objection.

(f) Notice to inventor of the ﬁling of an

application. The Ofﬁce may publish notice in the

Ofﬁcial Gazette as to the ﬁling of an application

on behalf of an inventor by a person who otherwise

shows sufﬁcient proprietary interest in the matter.

(g) International applications.

(1) Copies of international application ﬁles

for international applications which designate the

U.S. and which have been published in accordance

with PCT Article 21(2), or copies of a document in

such application ﬁles, will be furnished in

accordance with PCT Articles 30 and 38 and PCT

Rules 94.2 and 94.3, upon written request including

a showing that the publication of the application has

occurred and that the U.S. was designated, and upon

payment of the appropriate fee (see § 1.19(b)), if:

(i) With respect to the Home Copy (the

copy of the international application kept by the

Ofﬁce in its capacity as the Receiving Ofﬁce, see

PCT Article 12(1)), the international application

was ﬁled with the U.S. Receiving Ofﬁce;

(ii) With respect to the Search Copy (the

copy of an international application kept by the

Ofﬁce in its capacity as the International Searching

Authority, see PCT Article 12(1)), the U.S. acted

as the International Searching Authority, except for

the written opinion of the International Searching

Authority which shall not be available until the

expiration of thirty months from the priority date;

(iii) With respect to the Examination

Copy (the copy of an international application kept

by the Ofﬁce in its capacity as the International

Preliminary Examining Authority), the United States

acted as the International Preliminary Examining

Authority, an International Preliminary Examination

Report has issued, and the United States was elected.

(2) A copy of an English language

translation of a publication of an international

application which has been ﬁled in the United States

Patent and Trademark Ofﬁce pursuant to 35 U.S.C.

154(d)(4) will be furnished upon written request

including a showing that the publication of the

application in accordance with PCT Article 21(2)

January 2018R-29

§ 1.14CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

has occurred and that the U.S. was designated, and

upon payment of the appropriate fee (§ 1.19(b)(4)).

(3) Access to international application ﬁles

for international applications which designate the

U.S. and which have been published in accordance

with PCT Article 21(2), or copies of a document in

such application ﬁles, will be permitted in

accordance with PCT Articles 30 and 38 and PCT

Rules 44 ter.1, 94.2 and 94.3, upon written request

including a showing that the publication of the

application has occurred and that the U.S. was

designated.

(4) In accordance with PCT Article 30,

copies of an international application-as-ﬁled under

paragraph (a) of this section will not be provided

prior to the international publication of the

application pursuant to PCT Article 21(2).

(5) Access to international application ﬁles

under paragraphs (a)(1)(i) through (a)(1)(vi) and

(g)(3) of this section will not be permitted with

respect to the Examination Copy in accordance with

PCT Article 38.

(h) Access by a Foreign Intellectual Property

Ofﬁce.

(1) Access to an application-as-ﬁled may be

provided to any foreign intellectual property ofﬁce

participating with the Ofﬁce in a bilateral or

multilateral priority document exchange agreement

(participating foreign intellectual property ofﬁce),

if the application contains written authority granting

such access. Written authority provided under this

paragraph (h)(1) will be treated as authorizing the

Ofﬁce to provide the following to all participating

foreign intellectual property ofﬁces in accordance

with their respective agreements with the Ofﬁce:

(i) A copy of the application-as-ﬁled and

its related bibliographic data;

(ii) A copy of the application-as-ﬁled of

any application the ﬁling date of which is claimed

by the application in which written authority under

this paragraph (h)(1) is ﬁled and its related

bibliographic data; and

(iii) The date of ﬁling of the written

authorization under this paragraph (h)(1).

(2) Access to the ﬁle contents of an

application may be provided to a foreign intellectual

property ofﬁce that has imposed a requirement for

information on a counterpart application ﬁled with

the foreign intellectual property ofﬁce where the

foreign intellectual property ofﬁce is a party to a

bilateral or multilateral agreement with the Ofﬁce

to provide the required information from the

application ﬁled with the Ofﬁce and the application

contains written authority granting such access.

Written authority provided under this paragraph

(h)(2) will be treated as authorizing the Ofﬁce to

provide the following to all foreign intellectual

property ofﬁces in accordance with their respective

agreements with the Ofﬁce:

(i) Bibliographic data related to the

application; and

(ii) Any content of the application ﬁle

necessary to satisfy the foreign intellectual property

ofﬁce requirement for information imposed on the

counterpart application as indicated in the respective

agreement.

(3) Written authority provided under

paragraphs (h)(1) and (h)(2) of this section must

include the title of the invention (§ 1.72(a)), comply

with the requirements of paragraph (c) of this

section, and be submitted on an application data

sheet (§ 1.76) or on a separate document (§ 1.4(c)).

The written authority provided under these

paragraphs should be submitted before ﬁling any

subsequent foreign application in which priority is

claimed to the application.

(i) Access or copies in other circumstances.

The Ofﬁce, either sua sponte or on petition, may

also provide access or copies of all or part of an

application if necessary to carry out an Act of

Congress or if warranted by other special

circumstances. Any petition by a member of the

public seeking access to, or copies of, all or part of

any pending or abandoned application preserved in

conﬁdence pursuant to paragraph (a) of this section,

or any related papers, must include:

(1) The fee set forth in § 1.17(g); and

(2) A showing that access to the application

is necessary to carry out an Act of Congress or that

special circumstances exist which warrant petitioner

being granted access to all or part of the application.

(j) International design applications.

(1) With respect to an international design

application maintained by the Ofﬁce in its capacity

as a designated ofﬁce (§ 1.1003) for national

processing, the records associated with the

R-30January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.14

international design application may be made

available as provided under paragraphs (a) through

(i) of this section.

(2) With respect to an international design

application maintained by the Ofﬁce in its capacity

as an ofﬁce of indirect ﬁling (§ 1.1002), the records

of the international design application may be made

available under paragraph (j)(1) of this section where

contained in the ﬁle of the international design

application maintained by the Ofﬁce for national

processing. Also, if beneﬁt of the international

design application is claimed under 35 U.S.C. 386(c)

in a U.S. patent or published application, the ﬁle

contents of the application may be made available

to the public, or the ﬁle contents of the application,

a copy of the application-as-ﬁled, or a speciﬁc

document in the ﬁle of the application may be

provided to any person upon written request and

payment of the appropriate fee (§ 1.19(b)).

[42 FR 5593, Jan. 28, 1977; 43 FR 20462, May

11, 1978; para. (e) added, 47 FR 41272, Sept. 17, 1982,

effective Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984,

effective Apr. 1, 1984; para. (d), 49 FR 48416, Dec. 12,

1984, effective Feb. 11, 1985; para. (b), 50 FR 9378,

Mar. 7, 1985, effective May 8, 1985; 53 FR 23733, June

23, 1988; para. (e), 54 FR 6893, Feb. 15, 1989, effective

Apr. 17, 1989; para. (b) revised, 58 FR 54504, Oct. 22,

1993, effective Jan. 3, 1994; para. (e) amended, 60 FR

20195, Apr. 25, 1995, effective June 8, 1995; paras. (a),

(b) and (e) amended, 61 FR 42790, Aug. 19, 1996,

effective Sept. 23, 1996; para. (a) revised & para. (f)

added, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; para. (g) added, 63 FR 29614, June 1, 1998,

effective July 1, 1998, (adopted as ﬁnal, 63 FR 66040,

Dec. 1, 1998); revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; paras. (a), (b), (c), (e), (i) and (j)

revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29,

2000; para (h) corrected, 65 FR 78958, Dec. 18, 2000;

para.(i)(2) revised, 66 FR 67087, Dec. 28, 2001, effective

Dec. 28, 2001; para. (d)(4) revised, 67 FR 520, Jan. 4,

2002, effective Apr. 1, 2002; paras. (g) & (g)(1) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003;

revised, 68 FR 38611, June 30, 2003, effective July 30,

2003; paras. (g)(1)(ii) & (g)(3) revised, 68 FR 59881,

Oct. 20, 2003, effective Jan. 1, 2004; para. (g)(1)(ii)

corrected, 68 FR 67805, Dec., 4, 2003; para. (g)(5)

revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1,

2004; para. (g)(2) revised, 68 FR 70996, Dec. 22, 2003,

effective Jan. 21, 2004; para. (e) revised, 69 FR 49959,

Aug. 12, 2004, effective Sept. 13, 2004; para. (h)(1)

revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22,

2004; paras. (a)(1)(iii), (a)(1)(v), (a)(1)(vi), (a)(1)(vii),

(a)(2) introductory text, & (b) revised, para. (h)

redesignated as para. (i) and para. (h) added, 72 FR 1664,

Jan. 16, 2007, effective Jan. 16, 2007; paras. (c) and (f)

revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16,

2012; para.(f) revised, 78 FR 11024, Feb. 14, 2013,

effective Mar. 16, 2013; paras. (a)(1)(ii)-(vii) and

(a)(2)(iv) revised and para. (j) added, 80 FR 17918, Apr.

2, 2015, effective May 13, 2015; para (h) revised, 80 FR

65649, Oct. 27, 2015, effective Nov. 30, 2015]

[*The changes to paras. (c) and (f) effective Sept.

16, 2012 are applicable only to patent applications ﬁled

under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012.

See § 1.14 (pre-AIA) for paras. (c) and (f) otherwise in

effect.]

§ 1.14 (pre-AIA) Patent applications

preserved in conﬁdence.

[Editor Note: Applicable to patent applications

ﬁled before September 16, 2012*]

* * * * *

application. Access to an application may be

provided to any person if the application ﬁle is

available, and the application contains written

authority (e.g., a power to inspect) granting access

to such person. The written authority must be signed

by:

(1) An applicant;

(2) An attorney or agent of record;

(3) An authorized ofﬁcial of an assignee of

record (made of record pursuant to § 3.71 of this

chapter); or

(4) A registered attorney or agent named in

the papers accompanying the application papers

ﬁled under § 1.53 or the national stage documents

ﬁled under § 1.495, if an executed oath or

declaration pursuant to § 1.63 or § 1.497 has not

been ﬁled.

* * * * *

(f) Publication pursuant to § 1.47. Information

as to the ﬁling of an application will be published

in the Ofﬁcial Gazette in accordance with § 1.47(c).

* * * * *

[*See § 1.14 for the current rule, including the

portions of the rule not reproduced above and applicable

irrespective of the ﬁling date of the application]

January 2018R-31

§ 1.14

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 1.15 [Reserved]

(Editor’s note: substance supplanted by Part 102)

[32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov.

26, 1969; amended 53 FR 47685, Nov. 25, 1988, effective

Dec. 30, 1988; removed and reserved, 68 FR 14332, Mar.

25, 2003, effective May 1, 2003]

FEES AND PAYMENT OF MONEY

§ 1.16 National application ﬁling, search,

and examination fees.

(a) Basic fee for ﬁling each application under

35 U.S.C. 111 for an original patent, except design,

plant, or provisional applications:

By a micro entity (§ 1.29).................$75.00

By a small entity (§ 1.27(a)).............150.00

By a small entity (§ 1.27(a)) if the application

is submitted in compliance with the Ofﬁce electronic

ﬁling system (§ 1.27(b)(2))............................75.00

By other than a small or micro

entity.............................................................300.00

(b) Basic fee for ﬁling each application under

35 U.S.C. 111 for an original design patent:

By a micro entity (§ 1.29).................$50.00

By a small entity (§ 1.27(a)).............100.00

By other than a small or micro

entity.............................................................200.00

original plant patent:

By a micro entity (§ 1.29).................$50.00

By a small entity (§ 1.27(a)).............100.00

By other than a small or micro

entity.............................................................200.00

(d) Basic fee for ﬁling each provisional

application:

By a micro entity (§ 1.29).................$70.00

By a small entity (§ 1.27(a)).............140.00

By other than a small or micro

entity.............................................................280.00

(e) Basic fee for ﬁling each application for the

reissue of a patent:

By a micro entity (§ 1.29).................$75.00

By a small entity (§ 1.27(a)).............150.00

By other than a small or micro

entity.............................................................300.00

(f) Surcharge for ﬁling the basic ﬁling fee,

search fee, examination fee, or the inventor’s oath

or declaration on a date later than the ﬁling date of

the application, an application that does not contain

at least one claim on the ﬁling date of the

application, or an application ﬁled by reference to

a previously ﬁled application under § 1.57(a), except

provisional applications:

By a micro entity (§ 1.29).................$40.00

By a small entity (§ 1.27(a))...............80.00

By other than a small or micro

entity.............................................................160.00

(g) Surcharge for ﬁling the basic ﬁling fee or

cover sheet (§ 1.51(c)(1)) on a date later than the

ﬁling date of the provisional application:

By a micro entity (§ 1.29).................$15.00

By a small entity (§ 1.27(a))...............30.00

By other than a small or micro entity...60.00

(h) In addition to the basic ﬁling fee in an

application, other than a provisional application, for

ﬁling or later presentation at any other time of each

claim in independent form in excess of 3:

By a micro entity (§ 1.29)...............$115.00

By a small entity (§ 1.27(a)).............230.00

By other than a small or micro

entity.............................................................460.00

(i) In addition to the basic ﬁling fee in an

application, other than a provisional application, for

ﬁling or later presentation at any other time of each

claim (whether dependent or independent) in excess

of 20 (note that § 1.75(c) indicates how multiple

dependent claims are considered for fee calculation

purposes):

By a micro entity (§ 1.29).................$25.00

By a small entity (§ 1.27(a))...............50.00

By other than a small or micro

entity.............................................................100.00

(j) In addition to the basic ﬁling fee in an

application, other than a provisional application,

R-32January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.15

that contains, or is amended to contain, a multiple

dependent claim, per application:

By a micro entity (§ 1.29)...............$205.00

By a small entity (§ 1.27(a)).............410.00

By other than a small or micro

entity.............................................................820.00

(k) Search fee for each application ﬁled under

35 U.S.C. 111 for an original patent, except design,

plant, or provisional applications:

By a micro entity (§ 1.29)...............$165.00

By a small entity (§ 1.27(a)).............330.00

By other than a small or micro

entity.............................................................660.00

(l) Search fee for each application under 35

U.S.C. 111 for an original design patent:

By a micro entity (§ 1.29).................$40.00

By a small entity (§ 1.27(a))...............80.00

By other than a small or micro

entity.............................................................160.00

(m) Search fee for each application for an

original plant patent:

By a micro entity (§ 1.29)...............$105.00

By a small entity (§ 1.27(a)).............210.00

By other than a small or micro

entity.............................................................420.00

(n) Search fee for each application for the

reissue of a patent:

By a micro entity (§ 1.29)...............$165.00

By a small entity (§ 1.27(a)).............330.00

By other than a small or micro

entity.............................................................660.00

(o) Examination fee for each application ﬁled

under 35 U.S.C. 111 for an original patent, except

design, plant, or provisional applications:

By a micro entity (§ 1.29)...............$190.00

By a small entity (§ 1.27(a)).............380.00

By other than a small entity..............760.00

(p) Examination fee for each application under

35 U.S.C. 111 for an original design patent:

By a micro entity (§ 1.29)...............$150.00

By a small entity (§ 1.27(a)).............300.00

By other than a micro or small

entity.............................................................600.00

(q) Examination fee for each application for an

original plant patent:

By a micro entity (§ 1.29)...............$155.00

By a small entity (§ 1.27(a)).............310.00

By other than a small or micro

entity.............................................................620.00

(r) Examination fee for each application for the

reissue of a patent:

By a micro entity (§ 1.29)...............$550.00

By a small entity (§ 1.27(a))..........1,100.00

By other than a small or micro

entity..........................................................2,200.00

(s) Application size fee for any application ﬁled

under 35 U.S.C.111 for the speciﬁcation and

drawings which exceed 100 sheets of paper, for each

additional 50 sheets or fraction thereof:

By a micro entity (§ 1.29)...............$100.00

By a small entity (§ 1.27(a)).............200.00

By other than a small or micro

entity.............................................................400.00

(t) Non-electronic ﬁling fee for any application

under 35 U.S.C. 111(a) that is ﬁled on or after

November 15, 2011, other than by the Ofﬁce

electronic ﬁling system, except for a reissue, design,

or plant application:

By a small entity (§ 1.27(a))...........$200.00

By other than a small entity............$400.00

[Added, 47 FR 41272, Sept. 17, 1982, effective

date Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective

date Oct. 5, 1985; paras. (a), (b), (d)-(i), 54 FR 6893, Feb.

15, 1989, effective Apr. 17, 1989; paras. (a)-(j), 56 FR

65142, Dec. 13, 1991, effective Dec. 16, 1991; paras.

(a)-(d) and (f)-(j), 57 FR 38190, Aug. 21, 1992, effective

Oct. 1, 1992; paras. (a), (b), (d) and (f)-(i), 59 FR 43736,

Aug. 25, 1994, effective Oct. 1, 1994; paras. (a)-(g)

amended and paras. (k) and (l) added, 60 FR 20195, Apr.

25, 1995, effective June 8, 1995; paras. (a), (b), (d), &

(f)-(i) amended, 60 FR 41018, Aug. 11, 1995, effective

Oct. 1, 1995; paras. (a), (b), (d), and (f)-(i) amended and

para. (m) added, 61 FR 39585, July 30, 1996, effective

Oct. 1, 1996; paras. (a), (b), (d), and (f)-(i) amended, 62

FR 40450, July 29, 1997, effective Oct. 1, 1997; paras.

(d) & (l) amended, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; paras. (a)-(d) and (f)-(j) revised, 63 FR

6758, Dec. 8, 1998, effective Nov. 10, 1998; paras. (a)

January 2018R-33

§ 1.16CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

and (b) revised, 64 FR 67774, Dec. 3, 1999, effective

Dec. 29, 1999; paras. (a), (b), (d), and (f)-(i) revised, 65

FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; paras.

(a)-(l) revised, 65 FR 78958, Dec. 18, 2000; paras. (a),

(b), (d), (f)-(i) and (k) revised, 66 FR 39447, July 31,

2001, effective Oct. 1, 2001; paras. (a), (g), and (h)

revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1,

2003; paras. (a), (b), (d), and (f)-(i) revised, 68 FR 41532,

July 14, 2003, effective Oct. 1, 2003; paras. (a), (b), (d),

and (f)-(i) revised, 69 FR 52604, Aug. 27, 2004, effective

Oct. 1, 2004; revised, 70 FR 3880, Jan. 27, 2005, effective

Dec. 8, 2004; paras. (f) and (s) revised, 70 FR 30360,

May 26, 2005, effective July 1, 2005; paras. (a)-(e) and

(h)-(s) revised, 72 FR 46899, Aug. 22, 2007, effective

Sept. 30, 2007; paras. (a)-(e), (h)-(k), and (m)-(s) revised,

73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para.

(t) added, 76 FR 70651, Nov. 15, 2011, effective Nov.

15, 2011; para. (f) revised, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012; paras. (a)-(e), (h)-(j), and (o)-(s)

revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5,

2012; paras. (a)-(s) revised, 78 FR 4212, Jan. 18, 2013,

effective Mar. 19, 2013; para. (f) revised, 78 FR 62368,

Oct. 21, 2013, effective Dec. 18, 2013; introductory text

of paras. (b), (l), and (p) revised, 80 FR 17918, Apr. 2,

2015, effective May 13, 2015; paras. (a)-(f) and (h)-(r)

revised, 82 FR 52780, Nov. 14, 2017, effective Jan. 16,

2018]

§ 1.17 Patent application and reexamination

processing fees.

(a) Extension fees pursuant to § 1.136(a):

(1) For reply within ﬁrst month:

By a micro entity (§ 1.29)............$50.00

By a small entity (§ 1.27(a))......$100.00

By other than a small or micro

entity...........................................................$200.00

(2) For reply within second month:

By a micro entity (§ 1.29)..........$150.00

By a small entity (§ 1.27(a))......$300.00

By other than a small or micro

entity...........................................................$600.00

(3) For reply within third month:

By a micro entity (§ 1.29)..........$350.00

By a small entity (§ 1.27(a))......$700.00

By other than a small or micro

entity........................................................$1,400.00

(4) For reply within fourth month:

By a micro entity (§ 1.29)..........$550.00

By a small entity (§ 1.27(a))....$1,100.00

By other than a small or micro

entity........................................................$2,200.00

(5) For reply within ﬁfth month:

By a micro entity (§ 1.29)..........$750.00

By a small entity (§ 1.27(a))....$1,500.00

By other than a small or micro

entity........................................................$3,000.00

(b) For fees in proceedings before the Patent

Trial and Appeal Board, see § 41.20 and § 42.15

of this title.

examination under § 1.102(e):

By a micro entity (§ 1.29)............$1,000.00

By a small entity (§ 1.27(a))........$2,000.00

By other than a small or micro entity

.................................................................$4,000.00

(d) For correction of inventorship in an

application after the ﬁrst action on the merits:

By a micro entity (§ 1.29)...............$150.00

By a small entity (§ 1.27(a))...........$300.00

By other than a small or micro

entity...........................................................$600.00

(e) To request continued examination pursuant

to § 1.114:

(1) For ﬁling a ﬁrst request for continued

examination pursuant to § 1.114 in an application:

By a micro entity (§ 1.29)..........$325.00

By a small entity (§ 1.27(a)) .......650.00

By other than a small or micro

entity..........................................................1,300.00

(2) For ﬁling a second or subsequent request

for continued examination pursuant to § 1.114 in an

application:

By a micro entity (§ 1.29)..........$475.00

By a small entity (§ 1.27(a))........950.00

By other than a small or micro

entity..........................................................1,900.00

(f) For ﬁling a petition under one of the

following sections which refers to this paragraph:

R-34January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.17

By a micro entity (§ 1.29)...............$100.00

By a small entity (§ 1.27(a)).............200.00

By other than a small or micro

entity.............................................................400.00

§ 1.36(a)—for revocation of a power of attorney

by fewer than all of the applicants.

§ 1.53(e)—to accord a ﬁling date.

§ 1.182—for decision on a question not

speciﬁcally provided for in an application for patent.

§ 1.183—to suspend the rules in an application

for patent.

§ 1.741(b)—to accord a ﬁling date to an

application under § 1.740 for extension of a patent

term.

§ 1.1023—to review the ﬁling date of an

international design application.

(g) For ﬁling a petition under one of the

following sections which refers to this paragraph:

By a micro entity (§ 1.29).................$50.00

By a small entity (§ 1.27(a)).............100.00

By other than a small or micro

entity.............................................................200.00

§ 1.12—for access to an assignment record.

§ 1.14—for access to an application.

§ 1.46—for ﬁling an application on behalf of an

inventor by a person who otherwise shows sufﬁcient

proprietary interest in the matter.

§ 1.55(f)—for ﬁling a belated certiﬁed copy of

a foreign application.

§ 1.55(g) —for ﬁling a belated certiﬁed copy of

a foreign application.

§ 1.57(a)—for ﬁling a belated certiﬁed copy of

a foreign application.

§ 1.59—for expungement of information.

§ 1.103(a)—to suspend action in an application.

§ 1.136(b)—for review of a request for extension

of time when the provisions of § 1.136(a) are not

available.

§ 1.377—for review of decision refusing to

accept and record payment of a maintenance fee

ﬁled prior to expiration of a patent.

§ 1.550(c)—for patent owner requests for

extension of time in ex parte reexamination

proceedings.

§ 1.956—for patent owner requests for extension

of time in inter partes reexamination proceedings.

§ 5.12—for expedited handling of a foreign

ﬁling license.

§ 5.15—for changing the scope of a license.

§ 5.25—for retroactive license.

(h) For ﬁling a petition under one of the

following sections which refers to this paragraph

(h):

By a micro entity (§ 1.29).................$35.00

By a small entity (§ 1.27(a))...............70.00

By other than a small or micro

entity.............................................................140.00

§ 1.84—for accepting color drawings or

photographs.

§ 1.91—for entry of a model or exhibit.

§ 1.102(d)—to make an application special.

§ 1.138(c)—to expressly abandon an application

to avoid publication.

§ 1.313—to withdraw an application from issue.

§ 1.314—to defer issuance of a patent.

(i) Processing fees.

(1) For taking action under one of the

following sections which refers to this paragraph:

By a micro entity (§ 1.29)............$35.00

By a small entity (§ 1.27(a))..........70.00

By other than a small or micro

entity.............................................................140.00

§ 1.28(c)(3)—for processing a non-itemized fee

deﬁciency based on an error in small entity status.

§ 1.29(k)(3)—for processing a non-itemized fee

deﬁciency based on an error in micro entity status.

§ 1.41(b)—for supplying the name or names of

the inventor or joint inventors in an application

without either an application data sheet or the

inventor’s oath or declaration, except in provisional

applications.

§ 1.48—for correcting inventorship, except in

provisional applications.

§ 1.52(d)—for processing a nonprovisional

application ﬁled with a speciﬁcation in a language

other than English.

§ 1.53(c)(3)—t[sic ] convert a provisional

application ﬁled under § 1.53(c) into a

nonprovisional application under § 1.53(b).

§1.71(g)(2)—for processing a belated

amendment under § 1.71(g).

§ 1.102(e)—for requesting prioritized

examination of an application.

§ 1.103(b)—for requesting limited suspension

of action, continued prosecution application for a

design patent (§ 1.53(d)).

January 2018R-35

§ 1.17CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 1.103(c)—for requesting limited suspension

of action, request for continued examination (§

1.114).

§ 1.103(d)—for requesting deferred examination

of an application.

§ 1.291(c)(5)—for processing a second or

subsequent protest by the same real party in interest.

§ 3.81—for a patent to issue to assignee,

assignment submitted after payment of the issue fee.

(2) For taking action under one of the

following sections which refers to this paragraph:

....................................................................$130.00

§ 1.217—for processing a redacted copy

of a paper submitted in the ﬁle of an application in

which a redacted copy was submitted for the patent

application publication.

§ 1.221—for requesting voluntary

publication or republication of an application.

(j) [Reserved]

(k) For ﬁling a request for expedited

examination under § 1.155(a):

By a micro entity (§ 1.29)...............$225.00

By a small entity (§ 1.27(a))...........$450.00

By other than a small or micro

entity...........................................................$900.00

(l) [Reserved]

(m) For ﬁling a petition for the revival of an

abandoned application for a patent, for the delayed

payment of the fee for issuing each patent, for the

delayed response by the patent owner in any

reexamination proceeding, for the delayed payment

of the fee for maintaining a patent in force, for the

delayed submission of a priority or beneﬁt claim,

for the extension of the twelve-month (six-month

for designs) period for ﬁling a subsequent

application (§§ 1.55(c) and (e), 1.78(b), (c), and (e),

1.137, 1.378, and 1.452), or for ﬁling a petition to

excuse applicant’s failure to act within prescribed

time limits in an international design application (§

1.1051):

By a micro entity (§ 1.29)...............$500.00

By a small entity (§ 1.27(a))...........1000.00

By other than a small or micro

entity..........................................................2,000.00

(n) [Reserved]

(o) For every ten items or fraction thereof in a

third-party submission under § 1.290:

By a small entity (§ 1.27(a)) or micro entity

(§ 1.29).........................................................$90.00

By other than a small entity............$180.00

(p) For an information disclosure statement

under § 1.97(c) or (d):

By a micro entity (§ 1.29).................$60.00

By a small entity (§ 1.27(a)).............120.00

By other than a small or micro

entity.............................................................240.00

(q) Processing fee for taking action under one

of the following sections which refers to this

paragraph......................................................$50.00

§ 1.41—to supply the name or names of the inventor

or inventors after the ﬁling date without a cover

sheet as prescribed by § 1.51(c)(1) in a provisional

application.

§ 1.48—for correction of inventorship in a

provisional application.

§ 1.53(c)(2) —to convert a nonprovisional

application ﬁled under § 1.53(b) to a provisional

application under § 1.53(c).

(r) For entry of a submission after ﬁnal rejection

under § 1.129(a):

By a micro entity (§ 1.29)...............$210.00

By a small entity (§ 1.27(a))...........$420.00

By other than a small or micro

entity...........................................................$840.00

(s) For each additional invention requested to

be examined under § 1.129(b):

By a micro entity (§ 1.29)...............$210.00

By a small entity (§ 1.27(a))...........$420.00

By other than a small or micro

entity...........................................................$840.00

(t) For ﬁling a petition to convert an

international design application to a design

application under 35 U.S.C. chapter 16 (§ 1.1052):

By a micro entity (§ 1.29).................$45.00

By a small entity (§ 1.27(a))...............90.00

By other than a small or micro

entity.............................................................180.00

[Added 47 FR 41272, Sept. 17, 1982, effective

Oct. 1, 1982; para. (h), 48 FR 2708, Jan. 20, 1983,

R-36January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.17

effective Feb. 27, 1983; para. (h), 49 FR 13461, Apr. 4,

1984, effective June 4, 1984; para. (h), 49 FR 34724,

Aug. 31, 1984, effective Nov. 1, 1984; paras. (e), (g), (h)

and (i), 49 FR 48416, Dec. 12, 1984, effective Feb. 11,

1985; paras. (h), (n) and (c), 50 FR 9379, Mar. 7, 1985,

effective May 8, 1985; 50 FR 31824, Aug. 6, 1985,

effective Oct. 5, 1985; paras. (a)-(m), 54 FR 6893, Feb.

15, 1989, 54 FR 9431, March 7, 1989, effective Apr. 17,

1989; para. (i)(1), 54 FR 47518, Nov. 15, 1989, effective

Jan. 16, 1990; paras. (a)-(o), 56 FR 65142, Dec. 13, 1991,

effective Dec. 16, 1991; para. (i)(1), 57 FR 2021, Jan.

17, 1992, effective March 16, 1992; para. (p) added, 57

FR 2021, Jan. 17, 1992, effective March 16, 1992; para.

(i)(1), 57 FR 29642, July 6, 1992, effective Sept. 4, 1992;

corrected 57 FR 32439, July 22, 1992; paras. (b)-(g), (j),

and (m)-(o), 57 FR 38190, Aug. 21, 1992, effective Oct.

1, 1992; para. (h), 58 FR 38719, July 20, 1993, effective

Oct. 1, 1993; paras. (b)-(g), (j) and (m)-(p), 59 FR 43736,

Aug. 25, 1994, effective Oct. 1, 1994; paras. (h) & (i)

amended and paras. (q)-(s) added, 67 FR 20195, Apr. 25,

1995, effective June 8, 1995; paras. (b)-(g), (j), (m)-(p),

(r) & (s) amended, 60 FR 41018, Aug. 11, 1995, effective

Oct. 1, 1995; paras. (b)-(g), (j), (m)-(p), (r) and (s)

amended, 61 FR 39585, July 30, 1996, effective Oct. 1,

1996; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 62

FR 40450, July 29, 1997, effective Oct. 1, 1997; paras.

(a) - (d), (h), (i) & (q) revised, paras. (e)-(g) reserved, 62

FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

(q) corrected, 62 FR 61235, Nov. 17, 1997, effective Dec.

1, 1997; paras. (a)-(d), (l) and (m) revised, 63 FR 67578,

Dec. 8, 1998, effective Nov. 10, 1998; paras. (r) and (s)

revised, 63 FR 67578, Dec. 8, 1998, effective Dec. 8,

1998; paras. (r) and (s) revised, 64 FR 67774, Dec. 3,

1999, effective Jan. 10, 2000; para. (e) added and para.

(i) revised, 65 FR 14865, Mar. 20, 2000, effective May

29, 2000 (adopted as ﬁnal, 65 FR 50092, Aug. 16, 2000);

paras. (a)-(e), (m), (r) and (s) revised, 65 FR 49193,

August 11, 2000, effective October 1, 2000; paras. (h),

(i), (k), (l), (m), (p), and (q) revised, 65 FR 54604, Sept.

8, 2000, effective Nov. 7, 2000; heading and paras. (h),

(i), (l), (m) and (p) revised, 65 FR 57024, Sept. 20, 2000,

effective Nov. 29, 2000; para. (t) added, 65 FR 57024,

Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)-(e),

(r) and (s) revised, 65 FR 78958, Dec. 18, 2000; heading

and para. (h) revised, 66 FR 47387, Sept. 12, 2001,

effective Sept. 12, 2001; paras. (a)(2)-(a)(5), (b)-(e), (m)

and (r)-(t) revised, 66 FR 39447, July 31, 2001, effective

Oct. 1, 2001; paras. (a)(2)-(a)(5), (e), (m), and (r) through

(t) revised, 67 FR 70847, Nov. 27, 2002, effective Jan.

1, 2003; para. (h) revised, 68 FR 38611, June 30, 2003,

effective July 30, 2003; paras. (a)(2)-(a)(5), (b)-(e), (m),

and (r)-(t) revised, 68 FR 41532, July 14, 2003, effective

Oct. 1, 2003; paras. (c) and (d) removed and reserved

and paras. (b) and (h) revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; paras. (a)(2)-(a)(5), (e),

(m), and (r)-(t) revised, 69 FR 52604, Aug. 27, 2004,

effective Oct. 1, 2004; paras. (f) and (g) added and paras.

(h) and (i) revised, 69 FR 56481, Sept. 21, 2004, effective

Nov. 22, 2004; paras. (a), (l) and (m) revised, 70 FR 3880,

Jan. 27, 2005, effective Dec. 8, 2004; para. (i) revised,

70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005;

para. (f) revised, 70 FR 56119, Sept. 26, 2005, effective

Nov. 25, 2005; paras. (l) & (m) revised, 72 FR 18892,

Apr. 16, 2007, effective May 16, 2007; paras.

(a)(2)-(a)(5), (e), (l), (m), and (r)-(t) revised, 72 FR

46899, Aug. 22, 2007, effective Sept. 30, 2007; paras.

(a)(4) and (a)(5) corrected, 72 FR 55055, Sept. 28, 2007,

effective Sept. 30, 2007; para. (f) revised, 72 FR 46716,

Aug. 21, 2007 (implementation enjoined and never

became effective); para. (t) revised, 72 FR 51559, Sept.

10, 2007, and corrected 72 FR 57864, Oct. 11, 2007,

effective Nov. 9, 2007; paras. (a), (l), and (m) revised,

73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; para.

(f) revised, 74 FR 52686, Oct. 14, 2009, effective Oct.

14, 2009 (to remove changes made by the ﬁnal rules in

72 FR 46716 from the CFR); para. (c) added and para.

(i) revised, 76 FR 18399, Apr. 4, 2011, effective date

delayed until further notice, 76 FR 23876, Apr. 29, 2011

and withdrawn effective Sept. 23, 2011, 76 FR 59050,

Sept. 23, 2011; para. (c) added and para. (i) revised, 76

FR 59050, Sept. 23, 2011, effective Sept. 26, 2011; para.

(j) removed and reserved and para. (p) revised, 77 FR

42150, July 17, 2012, effective Sept. 16, 2012; para. (b)

revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16,

2012; paras. (g) and (i) revised, 77 FR 48776, Aug. 14,

2012, effective Sept. 16, 2012; paras. (a), (l), and (m)

revised, 77 FR 54360, Sept. 5, 2012, effective Oct. 5,

2012; paras.(g) and (i) revised and paras. (n) and (o)

removed and reserved, 78 FR 11024, Feb. 14, 2013,

effective Mar. 16, 2013; paras. (a)-(i), (k)-(m), and (p)-(t)

revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19,

2013; revised, 78 FR 17102, Mar. 20, 2013, effective

Mar. 20, 2013; paras. (f), (g), (m), and (p) revised, para.

(o) added and paras. (l) and (t) removed and reserved, 78

FR 62368, Oct. 21, 2013, corrected 78 FR 75251, Dec.

11, 2013, effective Dec. 18, 2013; paras. (f), (g), (i)(1)

and (m) revised and para. (t) added, 80 FR 17918, Apr.

2, 2015, effective May 13, 2015; paras. (e), (h), (m), (p)

and (t) revised, 82 FR 52780, Nov. 14, 2017, effective

Jan. 16, 2018]

§ 1.18 Patent post allowance (including issue)

fees.

(a)(1) Issue fee for issuing each original

patent, except a design or plant patent, or for issuing

each reissue patent:

By a micro entity (§ 1.29)..........$250.00

By a small entity (§ 1.27(a))........500.00

January 2018R-37

§ 1.18CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

By other than a small or micro

entity..........................................................1,000.00

(2) [Reserved]

(b)(1) Issue fee for issuing an original design

patent:

By a micro entity (§ 1.29)..........$175.00

By a small entity (§ 1.27(a))........350.00

By other than a small or micro

entity.............................................................700.00

(2) [Reserved]

(3) Issue fee for issuing an international

design application designating the United States,

where the issue fee is paid through the International

Bureau (Hague Agreement Rule 12(3)(c)) as an

alternative to paying the issue fee under paragraph

(b)(1) of this section: The amount established in

Swiss currency pursuant to Hague Agreement Rule

28 as of the date of mailing of the notice of

allowance (§ 1.311).

(c)(1) Issue fee for issuing an original plant

patent:

By a micro entity (§ 1.29)..........$200.00

By a small entity (§ 1.27(a))........400.00

By other than a small or micro

entity.............................................................800.00

(2) [Reserved]

(d)

(1) Publication fee on or after January 1,

2014................................................................$0.00

(2) Publication fee before January 1,

2014..............................................................300.00

(3) Republication fee (§ 1.221(a)).....300.00

(e) For ﬁling an application for patent term

adjustment under § 1.705:.........................$200.00.

(f) For ﬁling a request for reinstatement of all

or part of the term reduced pursuant to § 1.704(b)

in an application for patent term adjustment under

§ 1.705: ....................................................$400.00.

[Added, 47 FR 41272, Sept. 17, 1982, effective

Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective Oct.

5, 1985; revised, 54 FR 6893, Feb. 15, 1989, effective

Apr. 17, 1989; revised, 56 FR 65142, Dec. 13. 1991,

effective Dec. 16, 1991; paras. (a)-(c), 57 FR 38190, Aug.

21, 1992, effective Oct. 1, 1992; revised, 59 FR 43736,

Aug. 25, 1994, effective Oct. 1, 1994; amended, 60 FR

41018, Aug. 11, 1995, effective Oct. 1, 1995; amended,

61 FR 39585, July 30, 1996, effective Oct. 1, 1996;

amended, 62 FR 40450, July 29, 1997, effective Oct. 1,

1997; amended, 63 FR 67578, Dec. 8, 1998, effective

Nov. 10, 1998; revised, 65 FR 49193, Aug. 11, 2000,

effective Oct. 1, 2000; heading revised and paras. (d)-(f)

added, 65 FR 56366, Sept. 18, 2000, effective Nov. 17,

2000; para. (d) revised, 65 FR 57024, Sept. 20, 2000,

effective Nov. 29, 2000; paras. (a)-(c) revised, 65 FR

78958, Dec. 18, 2000; paras. (a)-(c) revised, 66 FR 39447,

July 31, 2001, effective Oct. 1, 2001; paras. (a)-(c)

revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1,

2003; paras. (a)-(c) revised, 68 FR 41532, July 14, 2003,

effective Oct. 1, 2003; paras. (a)-(c) revised, 69 FR

52604, Aug. 27, 2004, effective Oct. 1, 2004; paras.

(a)-(c) revised, 70 FR 3880, Jan. 27, 2005, effective Dec.

8, 2004; paras. (a)-(c) revised, 72 FR 46899, Aug. 22,

2007, effective Sept. 30, 2007; paras. (a)-(c) revised, 73

FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; paras.

(a)-(c) revised, 77 FR 54360, Sept. 5, 2012, effective Oct.

5, 2012; revised, 78 FR 4212, Jan. 18, 2013, effective

Mar. 19, 2013; para. (b)(3) added, 80 FR 17918, Apr. 2,

2015, effective May 13, 2015; paras. (a)-(c) revised, 82

FR 52780, Nov. 14, 2017, effective Jan. 16, 2018]

§ 1.19 Document supply fees.

The United States Patent and Trademark Ofﬁce will

supply copies of the following patent-related

documents upon payment of the fees indicated.

Paper copies will be in black and white unless the

original document is in color, a color copy is

requested and the fee for a color copy is paid.

(a) Uncertiﬁed copies of patent application

publications and patents:

(1) Printed copy of the paper portion of a

patent application publication or patent, including

a design patent, statutory invention registration, or

defensive publication document. Service includes

preparation of copies by the Ofﬁce within two to

three business days and delivery by United States

Postal Service; and preparation of copies by the

Ofﬁce within one business day of receipt and

delivery to an Ofﬁce Box or by electronic means

(e.g., facsimile, electronic mail):...................$3.00.

(2) Printed copy of a plant patent in

color:...........................................................$15.00.

(3) Color copy of a patent (other than a plant

patent) or statutory invention registration containing

a color drawing:.......................................... $25.00.

R-38January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.19

(b) Copies of Ofﬁce documents to be provided

in paper, or in electronic form, as determined by the

Director (for other patent-related materials see §

1.21(k) ):

(1) Copy of a patent application as ﬁled, or

a patent-related ﬁle wrapper and contents, stored in

paper in a paper ﬁle wrapper, in an image format in

an image ﬁle wrapper, or if color documents, stored

in paper in an Artifact Folder:

(i) If provided on paper:

(A) Application as ﬁled: .......$35.00.

(B) File wrapper and

contents:....................................................$280.00.

(D) Individual application documents,

other than application as ﬁled, per

document:....................................................$25.00.

(ii) If provided on compact disc or other

physical electronic medium in single order or if

provided electronically (e.g., by electronic

transmission) other than on a physical electronic

medium:

(A) Application as ﬁled:........$35.00.

(B) File wrapper and

contents:......................................................$55.00.

(iii) [Reserved]

(iv) If provided to a foreign intellectual

property ofﬁce pursuant to a bilateral or multilateral

agreement (see § 1.14(h)):...........................$0.00.

(2) [Reserved]

(3) Copy of Ofﬁce records, except copies

available under paragraph (b)(1) or (2) of this

section:........................................................$25.00.

(4) For assignment records, abstract of title

and certiﬁcation, per patent:........................$35.00.

to libraries copies of all patents issued annually, per

annum:........................................................ $50.00.

(d) [Reserved]

(e) [Reserved]

(f) Uncertiﬁed copy of a non-United States

patent document, per document:.................$25.00.

(g) [Reserved]

(h) Copy of Patent Grant Single-Page TIFF

Images (52 week subscription):...........$10,400.00.

(i) Copy of Patent Grant Full-Text W/ Embedded

Images, Patent Application Publication Single-Page

TIFF Images, or Patent Application Publication

Full-Text W/Embedded Images (52 week

subscription):..........................................$5,200.00.

(j) Copy of Patent Technology Monitoring Team

(PTMT) Patent Bibliographic Extract and Other

DVD (Optical Disc) Products:....................$50.00.

(k) Copy of U.S. Patent Custom Data

Extracts:....................................................$100.00.

(l) Copy of Selected Technology Reports,

Miscellaneous Technology Areas:...............$30.00.

[Added 47 FR 41272, Sept. 17, 1982, effective

date Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984,

effective date Apr. 1, 1984; paras. (f) and (g) added, 49

FR 34724, Aug. 31, 1984, effective date Nov. 1, 1984;

paras. (a) and (c), 50 FR 9379, Mar. 7, 1985, effective

date May 8,1985; 50 FR 31825, Aug. 6, 1985, effective

date Oct. 5, 1985; revised, 54 FR 6893, Feb. 15, 1989;

54 FR 9432, March 7, 1989, effective Apr. 17, 1989,

revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16,

1991; paras. (b)(4), (f) and (h), 57 FR 38190, Aug. 21,

1992, effective Oct.1, 1992; para. (a)(3), 58 FR 38719,

July 20, 1993, effective Oct. 1, 1993; paras. (a)(1)(ii),

(a)(1)(iii), (b)(1)(i), & (b)(1)(ii) amended, 60 FR 41018,

Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(2) and

(a)(3) amended, 62 FR 40450, July 29, 1997, effective

Oct. 1, 1997; paras. (a)(1)(i) through (a)(1)(iii) revised,

64 FR 67486, Dec. 2, 1999, effective Dec. 2, 1999;

introductory text and paras. (a) and (b) revised, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (g)

and (h) removed and reserved, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; para. (a) revised, 65 FR

57024, Sept. 20, 2000, effective Nov. 29, 2000; paras.

(a)(1) and (b)(1) revised, 67 FR 70847, Nov. 27, 2002,

effective Jan. 1, 2003; introductory text and para. (b)

revised and para. (g) added, 69 FR 56481, Sept. 21, 2004,

effective Nov. 22, 2004; para. (b)(1)(iv) added, 72 FR

1664, Jan. 16, 2007, effective Jan. 16, 2007; revised, 78

FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; para.

(b)(1)(iv) revised, 80 FR 65649, Oct. 27, 2015, effective

Nov. 30, 2015; para. (b) revised, paras. (d), (e) and (g)

removed and reserved, and paras. (h)-(l) added, 82 FR

52780, Nov. 14, 2017, effective Jan. 16, 2018]

§ 1.20 Post issuance fees.

(a) For providing a certiﬁcate of correction for

applicant’s mistake (§ 1.323).....................$150.00

January 2018R-39

§ 1.20CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(b) Processing fee for correcting inventorship in

a patent (§ 1.324).........................................150.00

(1)(i) For ﬁling a request for ex parte

reexamination (§ 1.510(a)) having:

(A) Forty (40) or fewer pages;

(B) Lines that are double-spaced or

one-and-a-half spaced;

font such as Arial, Times New Roman, or Courier;

(D) A font size no smaller than 12

point;

(E) Margins which conform to the

requirements of § 1.52(a)(1)(ii); and

(F) Sufﬁcient clarity and contrast to

permit direct reproduction and electronic capture

by use of digital imaging and optical character

recognition.

By a micro entity (§ 1.29)..$1,500.00

By a small entity (§

1.27(a))......................................................3,000.00

By other than a small or micro

entity..........................................................6,000.00

(ii) The following parts of an ex parte

reexamination request are excluded from paragraphs

(c)(1)(i)(A) through (F) of this section:

(A) The copies of every patent or printed

publication relied upon in the request pursuant to §

1.510(b)(3);

(B) The copy of the entire patent for

which reexamination is requested pursuant to §

1.510(b)(4); and

to § 1.510(b)(5) and (6).

(2) For ﬁling a request for ex parte

reexamination (§ 1.510(b)) which has sufﬁcient

clarity and contrast to permit direct reproduction

and electronic capture by use of digital imaging and

optical character recognition, and which otherwise

does not comply with the provisions of paragraph

(c)(1) of this section:

By a micro entity (§ 1.29).......$3,000.00

By a small entity (§ 1.27(a)).....6,000.00

By other than a small or micro

entity........................................................12,000.00

(3) For ﬁling with a request for

reexamination or later presentation at any other time

of each claim in independent form in excess of three

and also in excess of the number of claims in

independent form in the patent under reexamination:

By a micro entity (§ 1.29)..........$115.00

By a small entity (§ 1.27(a))......$230.00

By other than a small or micro entity

....................................................................$460.00

(4) For ﬁling with a request for

reexamination or later presentation at any other time

of each claim (whether dependent or independent)

in excess of 20 and also in excess of the number of

claims in the patent under reexamination (note that

§ 1.75(c) indicates how multiple dependent claims

are considered for fee calculation purposes):

By a micro entity (§ 1.29)............$25.00

By a small entity (§ 1.27(a))..........50.00

By other than a small or micro

entity.............................................................100.00

(5) If the excess claims fees required by

paragraphs (c)(3) and (4) of this section are not paid

with the request for reexamination or on later

presentation of the claims for which the excess

claims fees are due, the fees required by paragraphs

(c)(3) and (4) must be paid or the claims canceled

by amendment prior to the expiration of the time

period set for reply by the Ofﬁce in any notice of

fee deﬁciency in order to avoid abandonment.

(6) For ﬁling a petition in a reexamination

proceeding, except for those speciﬁcally enumerated

in §§ 1.550(i) and 1.937(d):

By a micro entity (§ 1.29)..........$485.00

By a small entity (§ 1.27(a))......$970.00

By other than a small or micro

entity........................................................$1,940.00

(7) For a refused request for ex parte

reexamination under § 1.510 (included in the request

for ex parte reexamination fee at § 1.20(c)(1))

By a micro entity (§ 1.29)..........$900.00

By a small entity (§ 1.27(a))....$1,800.00

By other than a small or micro

entity........................................................$3,600.00

R-40January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.20

(d) For ﬁling each statutory disclaimer (§

1.321):........................................................$160.00

(e) For maintaining an original or any reissue

patent, except a design or plant patent, based on an

application ﬁled on or after December 12, 1980, in

force beyond four years, the fee being due by three

years and six months after the original grant:

By a micro entity (§ 1.29)...............$400.00

By a small entity (§ 1.27(a)).............800.00

By other than a small or micro

entity..........................................................1,600.00

(f) For maintaining an original or any reissue

patent, except a design or plant patent, based on an

application ﬁled on or after December 12, 1980, in

force beyond eight years, the fee being due by seven

years and six months after the original grant:

By a micro entity (§ 1.29)...............$900.00

By a small entity (§ 1.27(a))..........1,800.00

By other than a small or micro

entity..........................................................3,600.00

(g) For maintaining an original or any reissue

patent, except a design or plant patent, based on an

application ﬁled on or after December 12, 1980, in

force beyond twelve years, the fee being due by

eleven years and six months after the original grant:

By a micro entity (§ 1.29)............$1,850.00

By a small entity (§ 1.27(a))..........3,700.00

By other than a small or micro

entity..........................................................7,400.00

(h) Surcharge for paying a maintenance fee

during the six-month grace period following the

expiration of three years and six months, seven years

and six months, and eleven years and six months

after the date of the original grant of a patent based

on an application ﬁled on or after December 12,

1980:

By a micro entity (§ 1.29).................$40.00

By a small entity (§ 1.27(a)).............$80.00

By other than a small or micro

entity...........................................................$160.00

(i) [Reserved]

(j) For ﬁling an application for extension of the

term of a patent.

Application for extension under §

1.740.......................................................$1,120.00.

Initial application for interim extension under

§ 1.790.......................................................$420.00.

Subsequent application for interim extension

under § 1.790..............................................$220.00

(k) In supplemental examination proceedings:

(1) For processing and treating a request for

supplemental examination:

By a micro entity (§ 1.29).......$1,100.00

By a small entity (§ 1.27(a))....$2,200.00

By other than a small or micro

entity........................................................$4,400.00

(2) For ex parte reexamination ordered as

a result of a supplemental examination proceeding:

By a micro entity (§ 1.29).......$3,025.00

By a small entity (§ 1.27(a))....$6,050.00

By other than a small or micro

entity......................................................$12,100.00

(3) For processing and treating, in a

supplemental examination proceeding, a non-patent

document over 20 sheets in length, per document:

(i) Between 21 and 50 sheets:

By a micro entity (§ 1.29)......$45.00

By a small entity (§ 1.27(a))....$90.00

By other than a small or micro

entity...........................................................$180.00

(ii) For each additional 50 sheets or a

fraction thereof:

By a micro entity (§ 1.29)......$70.00

By a small entity (§

1.27(a)).......................................................$140.00

By other than a small or micro

entity...........................................................$280.00

[Added 47 FR 41272, Sept. 17, 1982, effective

date Oct. 1, 1982; paras. (k), (l) and (m) added, 49 FR

34724, Aug. 31, 1984, effective date Nov. 1, 1984; paras.

(c), (f), (g) and (m), 50 FR 9379, Mar. 7, 1985, effective

date May 8, 1985; 50 FR 31825, Aug. 6, 1985, effective

date Oct. 5, 1985; 51 FR 28057, Aug. 4, 1986; 52 FR

9394, Mar. 24, 1987; paras. (a)-(n), 54 FR 6893, Feb. 15,

1989, 54 FR 8053, Feb. 24, 1989, effective Apr. 17, 1989;

revised 56 FR 65142, Dec. 13, 1991, effective Dec. 16,

1991; paras. (a), (c), (e)-(g) and (i), 57 FR 38190, Aug.

January 2018R-41

§ 1.20CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

21, 1992, effective Oct. 1, 1992; para. (i), 58 FR 44277,

Aug. 20, 1993, effective Sept. 20, 1993; paras. (c), (e)-(g),

(i)(1) and (j), 59 FR 43736, Aug. 25, 1994, effective Oct.

1, 1994; para. (j) revised, 60 FR 25615, May 12, 1995,

effective July 11, 1995; paras. (c), (e)-(g), (i)(2), & (j)(1)

amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1,

1995; paras. (a), (e) -(g), (i)(1), (i)(2), and (j)(1)-(j)(3)

amended, 61 FR 39585, July 30, 1996, effective Oct. 1,

1996; paras. (c), (e) - (g), (i)(1), (i)(2), and (j)(1)-(j)(3)

amended, 62 FR 40450, July 29, 1997, effective Oct. 1,

1997; paras. (d)-(g) revised, 63 FR 67578, Dec. 8, 1998,

effective Nov. 10, 1998; para. (e) revised, 64 FR 67774,

Dec. 3, 1999, effective Dec. 29, 1999; paras. (e)-(g)

revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1,

2000; paras. (b) and (d)-(h) revised, 65 FR 78958, Dec.

18, 2000; para. (b) corrected, 65 FR 80755, Dec. 22,

2000; para. (c) revised, 65 FR 76756, Dec. 7, 2000,

effective Feb. 5, 2001; paras. (e)-(g) revised, 66 FR

39447, July 31, 2001, effective Oct. 1, 2001; paras. (e)-(g)

revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1,

2003; para. (i) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; paras. (e)-(g) revised, 68 FR

41532, July 14, 2003, effective Oct. 1, 2003; paras. (e)-(g)

revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1,

2004; paras. (c)-(g) revised, 70 FR 3880, Jan. 27, 2005,

effective Dec. 8, 2004; paras. (c)(3), (c)(4), and (e)-(g)

revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30,

2007; paras. (c)(3),(c)(4), and (d)-(g) revised, 73 FR

47534, Aug. 14, 2008, effective Oct. 2, 2008; para. (c)(1)

revised and paras. (c)(6), (c)(7), and (k) added, 77 FR

48828, Aug. 14, 2012, effective Sept. 16, 2012; paras.

(c)(3), (c)(4), and (d)-(g) revised, 77 FR 54360, Sept. 5,

2012, effective Oct. 5, 2012; revised, 78 FR 4212, Jan.

18, 2013, effective Mar. 19, 2013; revised 78 FR 17102,

Mar. 20, 2013, effective Mar. 20, 2013; para. (i) removed

and reserved, 78 FR 62368, Oct. 21, 2013, effective Dec.

18, 2013; paras. (a)-(c) and (e)-(g) revised, 82 FR 52780,

Nov. 14, 2017, effective Jan. 16, 2018]

§ 1.21 Miscellaneous fees and charges.

The Patent and Trademark Ofﬁce has established

the following fees for the services indicated:

(a) Registration of attorneys and agents:

(l) For admission to examination for

registration to practice:

(i) Application Fee

(non-refundable):......................................$100.00.

(ii) Registration examination fee.

(A) For test administration by

commercial entity:.....................................$200.00.

(B) For test administration by the

USPTO:.....................................................$450.00.

(iii) For USPTO-administered review of

registration examination:...........................$450.00.

(2) On registration to practice or grant of

limited recognition:

(i) On registration to practice under § 11.6

of this chapter:...........................................$200.00.

(ii) On grant of limited recognition under

§ 11.9(b) of this chapter:...........................$200.00.

(iii) On change of registration from agent

to attorney:................................................$100.00.

(3) [Reserved]

(4) For certiﬁcate of good standing as an

attorney or agent:

(i) Standard:................................$40.00.

(ii) Suitable for framing:.............$50.00.

(5) For review of decision:

(i) By the Director of Enrollment and

Discipline under § 11.2(c) of this chapter:.$400.00.

(ii) Of the Director of Enrollment and

Discipline under § 11.2(d) of this chapter:.$400.00.

(6) Recovery/Retrieval of OED Information

System Customer Interface account by USPTO:

(i) For USPTO-assisted recovery of ID

or reset of password:...................................$70.00.

(ii) For USPTO-assisted change of

address:........................................................$70.00.

(7) [Reserved]

(8) [Reserved]

(9)

(i) Delinquency fee:...................$50.00.

(ii) Administrative reinstatement

fee:.............................................................$200.00.

(10) On application by a person for

recognition or registration after disbarment or

suspension on ethical grounds, or resignation

pending disciplinary proceedings in any other

jurisdiction; on application by a person for

recognition or registration who is asserting

rehabilitation from prior conduct that resulted in an

adverse decision in the Ofﬁce regarding the person’s

moral character; and on application by a person for

R-42January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.21

recognition or registration after being convicted of

a felony or crime involving moral turpitude or

breach of ﬁduciary duty; on petition for

reinstatement by a person excluded or suspended

on ethical grounds, or excluded on consent from

practice before the Ofﬁce:......................$1,600.00.

(b) Deposit accounts:

(1) [Reserved]

(2) Service charge for each month when the

balance at the end of the month is below

$1,000:.........................................................$25.00.

(3) Service charge for each month when the

balance at the end of the month is below $300 for

restricted subscription deposit accounts used

exclusively for subscription order of patent copies

as issued:.....................................................$25.00.

(d) [Reserved]

(e) International type search reports: For

preparing an international type search report of an

international type search made at the time of the

ﬁrst action on the merits in a national patent

application:..................................................$40.00.

(f) [Reserved]

(g) [Reserved]

(h) For recording each assignment, agreement,

or other paper relating to the property in a patent or

application, per property:

(1) If submitted electronically, on or after

January 1, 2014:............................................$0.00.

(2) If not submitted electronically:....$50.00.

(i) Publication in Ofﬁcial Gazette: For

publication in the Ofﬁcial Gazette of a notice of the

availability of an application or a patent for licensing

or sale:

Each application or patent:...............$25.00.

(j) [Reserved]

(k) [Reserved]

(l) [Reserved]

(m) For processing each payment refused

(including a check returned “unpaid”) or charged

back by a ﬁnancial institution: $50.00.

(n) For handling an application in which

proceedings are terminated pursuant to §

1.53(e):......................................................$130.00.

(o) The submission of very lengthy sequence

listings (mega-sequence listings) are subject to the

following fees:

(1) Submission of sequence listings in

electronic form ranging in size from 300 MB to 800

MB:

By a micro entity (§ 1.29)..........$250.00

By a small entity (§ 1.27(a))........500.00

By other than a small or micro

entity..........................................................1,000.00

(2) Submission of sequence listings in

electronic form exceeding 800 MB in size:

By a micro entity (§ 1.29).......$2,500.00

By a small entity (§ 1.27(a)).....5,000.00

By other than a small or micro

entity........................................................10,000.00

(p) Additional Fee for Overnight Delivery:

$40.00.

(q) Additional Fee for Expedited Service:

$160.00.

[Added 47 FR 41272, Sept. 17, 1982, effective

date Oct. 1, 1982; paras. (b) and (l), 49 FR 553, Jan. 4,

1984, effective date Apr. 1, 1984; paras. (a)(5) and (6)

added, 50 FR 5171, Feb. 6, 1985, effective date Apr. 8,

1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5,

1985; paras. (a), (b)(1), (d)-(j), (l)-(m), 54 FR 6893, Feb.

15, 1989; 54 FR 8053, Feb. 24, 1989; 54 FR 9432, March

7, 1989, effective Apr. 17, 1989; para. (n) added 54 FR

47518, Nov. 15, 1989, effective Jan. 16, 1990; paras.

(o)-(q) added 54 FR 50942, Dec.11, 1989, effective Feb.

12, 1990; paras. (a)-(c), (e)-(h), (j)-(l) & (n) amended,

56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;

paras. (p) and (q) deleted, 56 FR 65142, Dec. 13, 1991,

effective Dec. 16, 1991; paras. (a)(1), (a)(5), (a)(6), (b)(2),

(b)(3), (e) and (i), 57 FR 38190, Aug. 21, 1992, effective

Oct. 1, 1992; para. (p) added, 57 FR 38190, Aug. 21,

1992, effective Oct. 1, 1992; para. (p) deleted, 59 FR

43736, Aug.25, 1994, effective Oct. 1, 1994; para. (l)

amended, 60 FR 20195, Apr. 25, 1995, effective June 8,

1995; para. (a)(1) amended, 60 FR 41018, Aug. 11, 1995,

effective Oct. 1, 1995; paras. (a)(1), (a)(3) and (a)(6)

revised, 61 FR 39585, July 30, 1996, effective Oct. 1,

1996; paras. (a)(1)(ii), (a)(6), and (j) amended, 62 FR

40450, July 29, 1997, effective Oct. 1, 1997; paras. (l)

& (n) revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997; para. (a)(6)(ii) revised, 63 FR 67578, Dec. 8,

January 2018R-43

§ 1.21CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1998, effective Dec. 8, 1998; para (m) revised, 65 FR

33452, May 24, 2000, effective July 24, 2000; para. (a)(6)

revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1,

2000; para. (o) removed and reserved, 66 FR 39447, July

31, 2001, effective Oct. 1, 2001; para. (k) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para. (a)

revised, 69 FR 35427, June 24, 2004, effective July 26,

2004; para. (l) removed and reserved, 70 FR 30360, May

26, 2005, effective July 1, 2005; para. (c) removed and

reserved, 71 FR 64636, Nov. 3, 2006, effective Feb. 1,

2007; para. (a)(3) removed and reserved and paras. (a)(7),

(a)(8) and (a)(9) added, 73 FR 67750, Nov. 17, 2008,

effective Dec. 17, 2008; paras. (a), (e), (g)-(k) and (n)

revised and para. (d) removed and reserved, 78 FR 4212,

Jan. 18, 2013, effective Mar. 19, 2013; paras. (a)(7) and

(a)(8) removed and reserved, 78 FR 20180, Apr. 3, 2013,

effective May 3, 2013; revised, 82 FR 52780, Nov. 14,

2017, effective Jan. 16, 2018]

§ 1.22 Fees payable in advance.

(a) Patent fees and charges payable to the United

States Patent and Trademark Ofﬁce are required to

be paid in advance; that is, at the time of requesting

any action by the Ofﬁce for which a fee or charge

is payable with the exception that under § 1.53

applications for patent may be assigned a ﬁling date

without payment of the basic ﬁling fee.

(b) All fees paid to the United States Patent and

Trademark Ofﬁce must be itemized in each

individual application, patent, or other proceeding

in such a manner that it is clear for which purpose

the fees are paid. The Ofﬁce may return fees that

are not itemized as required by this paragraph. The

provisions of § 1.5(a) do not apply to the

resubmission of fees returned pursuant to this

paragraph.

[48 FR 2708, Jan. 20, 1983, effective Feb. 27,

1983; para. (b) revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; revised, 68 FR 48286, Aug. 13,

2003, effective Sept. 12, 2003]

§ 1.23 Methods of payment.

(a) All payments of money required for United

States Patent and Trademark Ofﬁce fees, including

fees for the processing of international applications

(§ 1.445), shall be made in U.S. dollars and in the

form of a cashier’s or certiﬁed check, Treasury note,

national bank notes, or United States Postal Service

money order. If sent in any other form, the Ofﬁce

may delay or cancel the credit until collection is

made. Checks and money orders must be made

payable to the Director of the United States Patent

and Trademark Ofﬁce. (Checks made payable to

the Commissioner of Patents and Trademarks will

continue to be accepted.) Payments from foreign

countries must be payable and immediately

negotiable in the United States for the full amount

of the fee required. Money sent to the Ofﬁce by mail

will be at the risk of the sender, and letters

containing money should be registered with the

United States Postal Service.

(b) Payments of money required for United

States Patent and Trademark Ofﬁce fees may also

be made by credit card, except for replenishing a

deposit account. Payment of a fee by credit card

must specify the amount to be charged to the credit

card and such other information as is necessary to

process the charge, and is subject to collection of

the fee. The Ofﬁce will not accept a general

authorization to charge fees to a credit card. If credit

card information is provided on a form or document

other than a form provided by the Ofﬁce for the

payment of fees by credit card, the Ofﬁce will not

be liable if the credit card number becomes public

knowledge.

juristic applicant or patent owner.

[43 FR 20462, May 11, 1978; revised, 64 FR

48900, Sept. 8, 1999, effective Oct. 30, 1999; revised,

65 FR 33452, May 24, 2000, effective June 5, 2000; para.

(b) revised, 69 FR 43751, July 22, 2004, effective Aug.

23, 2004; para. (c) added, 78 FR 62368, Oct. 21, 2013,

effective Dec. 18, 2013 ]

§ 1.24 [Reserved]

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; 48 FR 2708, Jan. 20, 1983, effective date Feb. 27,

1983; 50 FR 31825, Aug. 6, 1985, effective Oct. 5, 1985;

51 FR 28057, Aug. 4, 1986; 56 FR 65142, Dec. 13, 1991,

effective Dec. 16, 1991; para. (b) revised, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000; removed and

reserved, 65 FR 57024, Sept. 20, 2000, effective Nov.

29, 2000]

§ 1.25 Deposit accounts.

(a) For the convenience of attorneys, and the

general public in paying any fees due, in ordering

services offered by the Ofﬁce, copies of records,

etc., deposit accounts may be established in the

R-44January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.22

Patent and Trademark Ofﬁce upon payment of the

fee for establishing a deposit account (§ 1.21(b)(1)).

A minimum deposit of $1,000 is required for paying

any fee due or in ordering any services offered by

the Ofﬁce. However, a minimum deposit of $300

may be paid to establish a restricted subscription

deposit account used exclusively for subscription

order of patent copies as issued. At the end of each

month, a deposit account statement will be rendered.

A remittance must be made promptly upon receipt

of the statement to cover the value of items or

services charged to the account and thus restore the

account to its established normal deposit. An amount

sufﬁcient to cover all fees, services, copies, etc.,

requested must always be on deposit. Charges to

accounts with insufﬁcient funds will not be

accepted. A service charge (§ 1.21(b)(2)) will be

assessed for each month that the balance at the end

of the month is below $1,000. For restricted

subscription deposit accounts, a service charge (§

1.21(b)(3)) will be assessed for each month that the

balance at the end of the month is below $300.

(b) Filing, issue, appeal, international-type

search report, international application processing,

international design application fees, petition, and

post-issuance fees may be charged against these

accounts if sufﬁcient funds are on deposit to cover

such fees. A general authorization to charge all fees,

or only certain fees, set forth in §§ 1.16 through 1.18

to a deposit account containing sufﬁcient funds may

be ﬁled in an individual application, either for the

entire pendency of the application or with a

particular paper ﬁled. A general authorization to

charge fees in an international design application

set forth in § 1.1031 will only be effective for the

transmittal fee (§ 1.1031(a)). An authorization to

charge fees under § 1.16 in an international

application entering the national stage under 35

U.S.C. 371 will be treated as an authorization to

charge fees under § 1.492. An authorization to

charge fees set forth in § 1.18 to a deposit account

is subject to the provisions of § 1.311(b). An

authorization to charge to a deposit account the fee

for a request for reexamination pursuant to § 1.510

or 1.913 and any other fees required in a

reexamination proceeding in a patent may also be

ﬁled with the request for reexamination, and an

authorization to charge to a deposit account the fee

for a request for supplemental examination pursuant

to § 1.610 and any other fees required in a

supplemental examination proceeding in a patent

may also be ﬁled with the request for supplemental

examination. An authorization to charge a fee to a

deposit account will not be considered payment of

the fee on the date the authorization to charge the

fee is effective unless sufﬁcient funds are present

in the account to cover the fee.

deposit account by submitting a payment to the

United States Patent and Trademark Ofﬁce. A

payment to replenish a deposit account must be

submitted by one of the methods set forth in

paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this

section.

(1) A payment to replenish a deposit account

may be submitted by electronic funds transfer

through the Federal Reserve Fedwire System, which

requires that the following information be provided

to the deposit account holder’s bank or ﬁnancial

institution:

(i) Name of the Bank, which is Treas

NYC (Treasury New York City);

(ii) Bank Routing Code, which is

021030004;

(iii) United States Patent and Trademark

Ofﬁce account number with the Department of the

Treasury, which is 13100001; and

(iv) The deposit account holder’s

company name and deposit account number.

(2) A payment to replenish a deposit account

may be submitted by electronic funds transfer over

the Ofﬁce’s Internet Web site (www.uspto.gov).

(3) A payment to replenish a deposit account

may be addressed to: Director of the United States

Patent and Trademark Ofﬁce, Attn: Deposit

Accounts, 2051 Jamieson Avenue, Suite 300,

Alexandria, Virginia 22314.

[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984;

47 FR 41272, Sept. 17, 1982, effective Oct. 1,1982; 50

FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (b)

revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,

2000; para (b) revised, 65 FR 76756, Dec. 7, 2000,

effective Feb. 5, 2001; para. (b) revised, 67 FR 520, Jan.

4, 2002, effective Apr. 1, 2002; para. (c) added, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para. (c)(2)

revised, 69 FR 43751, July 22, 2004, effective Aug. 23,

2004; para. (c)(4) revised, 70 FR 56119, Sept. 26, 2005,

effective Nov. 25, 2005; para. (c)(3) revised, para. (c)(4)

removed, 73 FR 47534, Aug. 14, 2008, effective Oct. 2,

2008; para. (b) revised, 78 FR 62368, Oct. 21, 2013,

January 2018R-45

§ 1.25CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

effective Dec. 18, 2013; para. (b) revised, 80 FR 17918,

Apr. 2, 2015, effective May 13, 2015]

§ 1.26 Refunds.

(a) The Director may refund any fee paid by

mistake or in excess of that required. A change of

purpose after the payment of a fee, such as when a

party desires to withdraw a patent ﬁling for which

the fee was paid, including an application, an appeal,

or a request for an oral hearing, will not entitle a

party to a refund of such fee. The Ofﬁce will not

refund amounts of twenty-ﬁve dollars or less unless

a refund is speciﬁcally requested, and will not notify

the payor of such amounts. If a party paying a fee

or requesting a refund does not provide the banking

information necessary for making refunds by

electronic funds transfer (31 U.S.C. 3332 and 31

CFR part 208), or instruct the Ofﬁce that refunds

are to be credited to a deposit account, the Director

may require such information, or use the banking

information on the payment instrument to make a

refund. Any refund of a fee paid by credit card will

be by a credit to the credit card account to which

the fee was charged.

(b) Any request for refund must be ﬁled within

two years from the date the fee was paid, except as

otherwise provided in this paragraph or in § 1.28(a).

If the Ofﬁce charges a deposit account by an amount

other than an amount speciﬁcally indicated in an

authorization (§ 1.25(b)), any request for refund

based upon such charge must be ﬁled within two

years from the date of the deposit account statement

indicating such charge, and include a copy of that

deposit account statement. The time periods set forth

in this paragraph are not extendable.

reexamination proceeding in response to a request

for reexamination or supplemental examination,

fees paid with the request for reexamination or

supplemental examination will be refunded or

returned in accordance with paragraphs (c)(1)

through (c)(3) of this section. The reexamination

requester or the patent owner who requested a

supplemental examination proceeding, as

appropriate, should indicate the form in which any

refund should be made (e.g., by check, electronic

funds transfer, credit to a deposit account).

Generally, refunds will be issued in the form that

the original payment was provided.

(1) For an ex parte reexamination request,

the ex parte reexamination ﬁling fee paid by the

reexamination requester, less the fee set forth in §

1.20(c)(7), will be refunded to the requester if the

Director decides not to institute an ex parte

reexamination proceeding.

(2) For an inter partes reexamination

request, a refund of $7,970 will be made to the

reexamination requester if the Director decides not

to institute an inter partes reexamination

proceeding.

(3) For a supplemental examination request,

the fee for reexamination ordered as a result of

supplemental examination, as set forth in §

1.20(k)(2), will be returned to the patent owner who

requested the supplemental examination proceeding

if the Director decides not to institute a

reexamination proceeding.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; 50 FR 31826 Aug. 6, 1985, effective Oct. 5, 1985;

para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17,

1989; para. (c), 56 FR 65142, Dec. 13, 1991, effective

Dec. 16, 1991; paras. (a) and (c), 57 FR 38190, Aug. 21,

1992, effective Oct. 1,1992; para. (a) revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)

revised and para. (b) added, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; para. (c) revised, 65 FR 76756,

Dec. 7, 2000, effective Feb. 5, 2001; paras. (a) & (c)

revised, 68 FR 14332, Mar. 25, 2003, effective May 1,

2003; para. (a) revised, 68 FR 48286, Aug. 13, 2003,

effective Sept. 12, 2003; paras. (a) and (b) revised, 72

FR 46716, Aug. 21, 2007 (implementation enjoined and

never became effective); paras. (a) and (b) revised, 74

FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to

remove changes made by the ﬁnal rules in 72 FR 46716

from the CFR); para. (c) revised, 77 FR 48828, Aug. 14,

2012, effective Sept. 16, 2012]

§ 1.27 Deﬁnition of small entities and

establishing status as a small entity to permit

payment of small entity fees; when a

determination of entitlement to small entity

status and notiﬁcation of loss of entitlement

to small entity status are required; fraud on

the Ofﬁce.

[Editor Note: Para. (c)(2) below include(s) changes

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after September 16, 2012*]

(a) Deﬁnition of small entities. A small entity

as used in this chapter means any party (person,

R-46January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.26

small business concern, or nonproﬁt organization)

under paragraphs (a)(1) through (a)(3) of this

section.

(1) Person. A person, as used in paragraph

individual (e.g., an individual to whom an inventor

has transferred some rights in the invention) who

has not assigned, granted, conveyed, or licensed,

and is under no obligation under contract or law to

assign, grant, convey, or license, any rights in the

invention. An inventor or other individual who has

transferred some rights in the invention to one or

more parties, or is under an obligation to transfer

some rights in the invention to one or more parties,

can also qualify for small entity status if all the

parties who have had rights in the invention

transferred to them also qualify for small entity

status either as a person, small business concern, or

nonproﬁt organization under this section.

(2) Small business concern. A small

business concern, as used in paragraph (c) of this

section, means any business concern that:

(i) Has not assigned, granted, conveyed,

or licensed, and is under no obligation under contract

or law to assign, grant, convey, or license, any rights

in the invention to any person, concern, or

organization which would not qualify for small

entity status as a person, small business concern, or

nonproﬁt organization; and

(ii) Meets the size standards set forth in

13 CFR 121.801 through 121.805 to be eligible for

reduced patent fees. Questions related to standards

for a small business concern may be directed to:

Small Business Administration, Size Standards

Staff, 409 Third Street, SW., Washington, DC

20416.

(3) Nonproﬁt Organization. A nonproﬁt

organization, as used in paragraph (c) of this section,

means any nonproﬁt organization that:

(i) Has not assigned, granted, conveyed,

or licensed, and is under no obligation under contract

or law to assign, grant, convey, or license, any rights

in the invention to any person, concern, or

organization which would not qualify as a person,

small business concern, or a nonproﬁt organization;

and

(ii) Is either:

(A) A university or other institution

of higher education located in any country;

(B) An organization of the type

described in section 501(c)(3) of the Internal

Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and

exempt from taxation under section 501(a) of the

Internal Revenue Code (26 U.S.C. 501(a));

educational organization qualiﬁed under a nonproﬁt

organization statute of a state of this country (35

U.S.C. 201(i)); or

(D) Any nonproﬁt organization

located in a foreign country which would qualify as

a nonproﬁt organization under paragraphs

(a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this

section if it were located in this country.

(4) License to a Federal agency.

(i) For persons under paragraph (a)(1) of

this section, a license to the Government resulting

from a rights determination under Executive Order

10096 does not constitute a license so as to prohibit

claiming small entity status.

(ii) For small business concerns and

nonproﬁt organizations under paragraphs (a)(2) and

(a)(3) of this section, a license to a Federal agency

resulting from a funding agreement with that agency

pursuant to 35 U.S.C. 202(c)(4) does not constitute

a license for the purposes of paragraphs (a)(2)(i)

and (a)(3)(i) of this section.

(5) Security Interest. A security interest

does not involve an obligation to transfer rights in

the invention for the purposes of paragraphs (a)(1)

through (a)(3) of this section unless the security

interest is defaulted upon.

(b) Establishment of small entity status permits

payment of reduced fees.

(1) A small entity, as deﬁned in paragraph

(a) of this section, who has properly asserted

entitlement to small entity status pursuant to

paragraph (c) of this section will be accorded small

entity status by the Ofﬁce in the particular

application or patent in which entitlement to small

entity status was asserted. Establishment of small

entity status allows the payment of certain reduced

patent fees pursuant to 35 U.S.C. 41(h)(1).

(2) Submission of an original utility

application in compliance with the Ofﬁce electronic

January 2018R-47

§ 1.27CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

ﬁling system by an applicant who has properly

asserted entitlement to small entity status pursuant

to paragraph (c) of this section in that application

allows the payment of a reduced ﬁling fee pursuant

to 35 U.S.C. 41(h)(3).

(person, small business concern or nonproﬁt

organization) should make a determination, pursuant

to paragraph (f) of this section, of entitlement to be

accorded small entity status based on the deﬁnitions

set forth in paragraph (a) of this section, and must,

in order to establish small entity status for the

purpose of paying small entity fees, actually make

an assertion of entitlement to small entity status, in

the manner set forth in paragraphs (c)(1) or (c)(3)

of this section, in the application or patent in which

such small entity fees are to be paid.

(1) Assertion by writing. Small entity status

may be established by a written assertion of

entitlement to small entity status. A written assertion

must:

(i) Be clearly identiﬁable;

(ii) Be signed (see paragraph (c)(2) of

this section); and

(iii) Convey the concept of entitlement

to small entity status, such as by stating that

applicant is a small entity, or that small entity status

is entitled to be asserted for the application or patent.

While no speciﬁc words or wording are required to

assert small entity status, the intent to assert small

entity status must be clearly indicated in order to

comply with the assertion requirement.

(2) Parties who can sign the written

assertion. The written assertion can be signed by:

(i) The applicant (§ 1.42 or § 1.421);

(ii) A patent practitioner of record or a

practitioner acting in a representative capacity under

§ 1.34;

(iii) The inventor or a joint inventor, if

the inventor is the applicant; or

(iv) The assignee.

(3) Assertion by payment of the small entity

basic ﬁling, basic transmittal, basic national fee,

international search fee, or individual designation

fee in an international design application. The

payment, by any party, of the exact amount of one

of the small entity basic ﬁling fees set forth in §

1.16(a), (b), (c), (d), or (e), the small entity

transmittal fee set forth in § 1.445(a)(1), the small

entity international search fee set forth in §

1.445(a)(2) to a Receiving Ofﬁce other than the

United States Receiving Ofﬁce in the exact amount

established for that Receiving Ofﬁce pursuant to

PCT Rule 16, or the small entity basic national fee

set forth in § 1.492(a), will be treated as a written

assertion of entitlement to small entity status even

if the type of basic ﬁling, basic transmittal, or basic

national fee is inadvertently selected in error. The

payment, by any party, of the small entity ﬁrst part

of the individual designation fee for the United

States to the International Bureau (§ 1.1031) will

be treated as a written assertion of entitlement to

small entity status.

(i) If the Ofﬁce accords small entity

status based on payment of a small entity basic ﬁling

or basic national fee under paragraph (c)(3) of this

section that is not applicable to that application, any

balance of the small entity fee that is applicable to

that application will be due along with the

appropriate surcharge set forth in § 1.16(f), or §

1.16(g).

(ii) The payment of any small entity fee

other than those set forth in paragraph (c)(3) of this

section (whether in the exact fee amount or not) will

not be treated as a written assertion of entitlement

to small entity status and will not be sufﬁcient to

establish small entity status in an application or a

patent.

(4) Assertion required in related, continuing,

and reissue applications. Status as a small entity

must be speciﬁcally established by an assertion in

each related, continuing and reissue application in

which status is appropriate and desired. Status as a

small entity in one application or patent does not

affect the status of any other application or patent,

regardless of the relationship of the applications or

patents. The reﬁling of an application under § 1.53

as a continuation, divisional, or continuation-in-part

application (including a continued prosecution

application under § 1.53(d)), or the ﬁling of a reissue

application, requires a new assertion as to continued

entitlement to small entity status for the continuing

or reissue application.

(d) When small entity fees can be paid. Any

fee, other than the small entity basic ﬁling fees and

the small entity national fees of paragraph (c)(3) of

R-48January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.27

this section, can be paid in the small entity amount

only if it is submitted with, or subsequent to, the

submission of a written assertion of entitlement to

small entity status, except when refunds are

permitted by § 1.28(a).

(e) Only one assertion required.

(1) An assertion of small entity status need

only be ﬁled once in an application or patent. Small

entity status, once established, remains in effect until

changed pursuant to paragraph (g)(1) of this section.

Where an assignment of rights or an obligation to

assign rights to other parties who are small entities

occurs subsequent to an assertion of small entity

status, a second assertion is not required.

(2) Once small entity status is withdrawn

pursuant to paragraph (g)(2) of this section, a new

written assertion is required to again obtain small

entity status.

(f) Assertion requires a determination of

entitlement to pay small entity fees. Prior to

submitting an assertion of entitlement to small entity

status in an application, including a related,

continuing, or reissue application, a determination

of such entitlement should be made pursuant to the

requirements of paragraph (a) of this section. It

should be determined that all parties holding rights

in the invention qualify for small entity status. The

Ofﬁce will generally not question any assertion of

small entity status that is made in accordance with

the requirements of this section, but note paragraph

(h) of this section.

(g)(1) New determination of entitlement to

small entity status is needed when issue and

maintenance fees are due. Once status as a small

entity has been established in an application or

patent, fees as a small entity may thereafter be paid

in that application or patent without regard to a

change in status until the issue fee is due or any

maintenance fee is due.

(2) Notiﬁcation of loss of entitlement to

small entity status is required when issue and

maintenance fees are due. Notiﬁcation of a loss of

entitlement to small entity status must be ﬁled in

the application or patent prior to paying, or at the

time of paying, the earliest of the issue fee or any

maintenance fee due after the date on which status

as a small entity as deﬁned in paragraph (a) of this

section is no longer appropriate. The notiﬁcation

that small entity status is no longer appropriate must

be signed by a party identiﬁed in § 1.33(b). Payment

of a fee in other than the small entity amount is not

sufﬁcient notiﬁcation that small entity status is no

longer appropriate.

(h) Fraud attempted or practiced on the Ofﬁce.

(1) Any attempt to fraudulently establish

status as a small entity, or pay fees as a small entity,

shall be considered as a fraud practiced or attempted

on the Ofﬁce.

(2) Improperly, and with intent to deceive,

establishing status as a small entity, or paying fees

as a small entity, shall be considered as a fraud

practiced or attempted on the Ofﬁce.

[47 FR 40139, Sept. 10, 1982, added effective Oct.

1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982;

paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective

Apr. 1, 1984; revised, 62 FR 53132, Oct. 10, 1997,

effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8,

2000, effective Sept. 8, 2000; para. (a) revised, 69 FR

56481, Sept. 21, 2004, effective Sept. 21, 2004; paras.

(b) and (c)(3) revised, 70 FR 3880, Jan. 27, 2005,

effective Dec. 8, 2004; para. (c)(2) revised, 77 FR 48776,

Aug. 14, 2012, effective Sept. 16, 2012; para. (c)(3)

introductory text revised, 78 FR 4212, Jan. 18, 2013,

effective Mar. 19, 2013; para. (c)(3) revised, 80 FR

17918, Apr. 2, 2015, effective May 13, 2015]

[*The changes to para. (c)(2) effective Sept. 16,

2012 are applicable only to patent applications ﬁled under

35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See

§ 1.27 (pre-AIA) for para. (c)(2) otherwise in effect.]

§ 1.27 (pre-AIA) Deﬁnition of small entities

and establishing status as a small entity to

permit payment of small entity fees; when a

determination of entitlement to small entity

status and notiﬁcation of loss of entitlement

to small entity status are required; fraud on

the Ofﬁce.

[Editor Note: Para. (c)(2) below is not applicable

to patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after Sept. 16, 2012*]

(a) Deﬁnition of small entities. A small entity

as used in this chapter means any party (person,

small business concern, or nonproﬁt organization)

under paragraphs (a)(1) through (a)(3) of this

section.

(1) Person. A person, as used in paragraph

individual (e.g., an individual to whom an inventor

January 2018R-49

§ 1.27

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

has transferred some rights in the invention) who

has not assigned, granted, conveyed, or licensed,

and is under no obligation under contract or law to

assign, grant, convey, or license, any rights in the

invention. An inventor or other individual who has

transferred some rights in the invention to one or

more parties, or is under an obligation to transfer

some rights in the invention to one or more parties,

can also qualify for small entity status if all the

parties who have had rights in the invention

transferred to them also qualify for small entity

status either as a person, small business concern, or

nonproﬁt organization under this section.

(2) Small business concern. A small

business concern, as used in paragraph (c) of this

section, means any business concern that:

(i) Has not assigned, granted, conveyed,

or licensed, and is under no obligation under contract

or law to assign, grant, convey, or license, any rights

in the invention to any person, concern, or

organization which would not qualify for small

entity status as a person, small business concern, or

nonproﬁt organization; and

(ii) Meets the size standards set forth in

13 CFR 121.801 through 121.805 to be eligible for

reduced patent fees. Questions related to standards

for a small business concern may be directed to:

Small Business Administration, Size Standards

Staff, 409 Third Street, SW., Washington, DC

20416.

(3) Nonproﬁt Organization. A nonproﬁt

organization, as used in paragraph (c) of this section,

means any nonproﬁt organization that:

(i) Has not assigned, granted, conveyed,

or licensed, and is under no obligation under contract

or law to assign, grant, convey, or license, any rights

in the invention to any person, concern, or

organization which would not qualify as a person,

small business concern, or a nonproﬁt organization;

and

(ii) Is either:

(A) A university or other institution

of higher education located in any country;

(B) An organization of the type

described in section 501(c)(3) of the Internal

Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and

exempt from taxation under section 501(a) of the

Internal Revenue Code (26 U.S.C. 501(a));

educational organization qualiﬁed under a nonproﬁt

organization statute of a state of this country (35

U.S.C. 201(i)); or

(D) Any nonproﬁt organization

located in a foreign country which would qualify as

a nonproﬁt organization under paragraphs

(a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this

section if it were located in this country.

(4) License to a Federal agency.

(i) For persons under paragraph (a)(1) of

this section, a license to the Government resulting

from a rights determination under Executive Order

10096 does not constitute a license so as to prohibit

claiming small entity status.

(ii) For small business concerns and

nonproﬁt organizations under paragraphs (a)(2) and

(a)(3) of this section, a license to a Federal agency

resulting from a funding agreement with that agency

pursuant to 35 U.S.C. 202(c)(4) does not constitute

a license for the purposes of paragraphs (a)(2)(i)

and (a)(3)(i) of this section.

(5) Security Interest. A security interest

does not involve an obligation to transfer rights in

the invention for the purposes of paragraphs (a)(1)

through (a)(3) of this section unless the security

interest is defaulted upon.

(b) Establishment of small entity status permits

payment of reduced fees.

(1) A small entity, as deﬁned in paragraph

(a) of this section, who has properly asserted

entitlement to small entity status pursuant to

paragraph (c) of this section will be accorded small

entity status by the Ofﬁce in the particular

application or patent in which entitlement to small

entity status was asserted. Establishment of small

entity status allows the payment of certain reduced

patent fees pursuant to 35 U.S.C. 41(h)(1).

(2) Submission of an original utility

application in compliance with the Ofﬁce electronic

ﬁling system by an applicant who has properly

asserted entitlement to small entity status pursuant

to paragraph (c) of this section in that application

allows the payment of a reduced ﬁling fee pursuant

to 35 U.S.C. 41(h)(3).

(person, small business concern or nonproﬁt

organization) should make a determination, pursuant

R-50January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.27 (pre-AIA)

to paragraph (f) of this section, of entitlement to be

accorded small entity status based on the deﬁnitions

set forth in paragraph (a) of this section, and must,

in order to establish small entity status for the

purpose of paying small entity fees, actually make

an assertion of entitlement to small entity status, in

the manner set forth in paragraphs (c)(1) or (c)(3)

of this section, in the application or patent in which

such small entity fees are to be paid.

(1) Assertion by writing. Small entity status

may be established by a written assertion of

entitlement to small entity status. A written assertion

must:

(i) Be clearly identiﬁable;

(ii) Be signed (see paragraph (c)(2) of

this section); and

(iii) Convey the concept of entitlement

to small entity status, such as by stating that

applicant is a small entity, or that small entity status

is entitled to be asserted for the application or patent.

While no speciﬁc words or wording are required to

assert small entity status, the intent to assert small

entity status must be clearly indicated in order to

comply with the assertion requirement.

(2) Parties who can sign and ﬁle the written

assertion. The written assertion can be signed by:

(i) One of the parties identiﬁed in §

1.33(b) (e.g., an attorney or agent registered with

the Ofﬁce), § 3.73(b) of this chapter

notwithstanding, who can also ﬁle the written

assertion;

(ii) At least one of the individuals

identiﬁed as an inventor (even though a § 1.63

executed oath or declaration has not been

submitted), notwithstanding § 1.33(b)(4), who can

also ﬁle the written assertion pursuant to the

exception under § 1.33(b) of this part; or

(iii) An assignee of an undivided part

interest, notwithstanding §§ 1.33(b)(3) and 3.73(b)

of this chapter, but the partial assignee cannot ﬁle

the assertion without resort to a party identiﬁed

under § 1.33(b) of this part.

(3) Assertion by payment of the small entity

basic ﬁling or basic national fee. The payment, by

any party, of the exact amount of one of the small

entity basic ﬁling fees set forth in §§ 1.16(a),

1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity

basic national fee set forth in § 1.492(a), will be

treated as a written assertion of entitlement to small

entity status even if the type of basic ﬁling or basic

national fee is inadvertently selected in error.

(i) If the Ofﬁce accords small entity

status based on payment of a small entity basic ﬁling

or basic national fee under paragraph (c)(3) of this

section that is not applicable to that application, any

balance of the small entity fee that is applicable to

that application will be due along with the

appropriate surcharge set forth in § 1.16(f), or §

1.16(g).

(ii) The payment of any small entity fee

other than those set forth in paragraph (c)(3) of this

section (whether in the exact fee amount or not) will

not be treated as a written assertion of entitlement

to small entity status and will not be sufﬁcient to

establish small entity status in an application or a

patent.

(4) Assertion required in related, continuing,

and reissue applications. Status as a small entity

must be speciﬁcally established by an assertion in

each related, continuing and reissue application in

which status is appropriate and desired. Status as a

small entity in one application or patent does not

affect the status of any other application or patent,

regardless of the relationship of the applications or

patents. The reﬁling of an application under § 1.53

as a continuation, divisional, or continuation-in-part

application (including a continued prosecution

application under § 1.53(d)), or the ﬁling of a reissue

application, requires a new assertion as to continued

entitlement to small entity status for the continuing

or reissue application.

(d) When small entity fees can be paid. Any

fee, other than the small entity basic ﬁling fees and

the small entity national fees of paragraph (c)(3) of

this section, can be paid in the small entity amount

only if it is submitted with, or subsequent to, the

submission of a written assertion of entitlement to

small entity status, except when refunds are

permitted by § 1.28(a).

(e) Only one assertion required.

(1) An assertion of small entity status need

only be ﬁled once in an application or patent. Small

entity status, once established, remains in effect until

changed pursuant to paragraph (g)(1) of this section.

Where an assignment of rights or an obligation to

assign rights to other parties who are small entities

January 2018R-51

§ 1.27

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

occurs subsequent to an assertion of small entity

status, a second assertion is not required.

(2) Once small entity status is withdrawn

pursuant to paragraph (g)(2) of this section, a new

written assertion is required to again obtain small

entity status.

(f) Assertion requires a determination of

entitlement to pay small entity fees. Prior to

submitting an assertion of entitlement to small entity

status in an application, including a related,

continuing, or reissue application, a determination

of such entitlement should be made pursuant to the

requirements of paragraph (a) of this section. It

should be determined that all parties holding rights

in the invention qualify for small entity status. The

Ofﬁce will generally not question any assertion of

small entity status that is made in accordance with

the requirements of this section, but note paragraph

(h) of this section.

(g)(1) New determination of entitlement to

small entity status is needed when issue and

maintenance fees are due. Once status as a small

entity has been established in an application or

patent, fees as a small entity may thereafter be paid

in that application or patent without regard to a

change in status until the issue fee is due or any

maintenance fee is due.

(2) Notiﬁcation of loss of entitlement to

small entity status is required when issue and

maintenance fees are due. Notiﬁcation of a loss of

entitlement to small entity status must be ﬁled in

the application or patent prior to paying, or at the

time of paying, the earliest of the issue fee or any

maintenance fee due after the date on which status

as a small entity as deﬁned in paragraph (a) of this

section is no longer appropriate. The notiﬁcation

that small entity status is no longer appropriate must

be signed by a party identiﬁed in § 1.33(b). Payment

of a fee in other than the small entity amount is not

sufﬁcient notiﬁcation that small entity status is no

longer appropriate.

(h) Fraud attempted or practiced on the Ofﬁce.

(1) Any attempt to fraudulently establish

status as a small entity, or pay fees as a small entity,

shall be considered as a fraud practiced or attempted

on the Ofﬁce.

(2) Improperly, and with intent to deceive,

establishing status as a small entity, or paying fees

as a small entity, shall be considered as a fraud

practiced or attempted on the Ofﬁce.

[47 FR 40139, Sept. 10, 1982, added effective Oct.

1, 1982; para. (c) added, 47 FR 43276, Sept. 30, 1982;

paras. (b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective

Apr. 1, 1984; revised, 62 FR 53132, Oct. 10, 1997,

effective Dec.1, 1997; revised, 65 FR 54604, Sept. 8,

2000, effective Sept. 8, 2000; para. (a) revised, 69 FR

56481, Sept. 21, 2004, effective Sept. 21, 2004; paras.

(b) and (c)(3) revised, 70 FR 3880, Jan. 27, 2005,

effective Dec. 8, 2004]

[*See § 1.27 for more information and for para.

(c)(2) applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.28 Refunds when small entity status is

later established; how errors in small entity

status are excused.

(a) Refunds based on later establishment of

small entity status. A refund pursuant to § 1.26,

based on establishment of small entity status, of a

portion of fees timely paid in full prior to

establishing status as a small entity may only be

obtained if an assertion under § 1.27(c) and a request

for a refund of the excess amount are ﬁled within

three months of the date of the timely payment of

the full fee. The three-month time period is not

extendable under § 1.136. Status as a small entity

is waived for any fee by the failure to establish the

status prior to paying, at the time of paying, or

within three months of the date of payment of, the

full fee.

(b) Date of payment.

(1) The three-month period for requesting a

refund, pursuant to paragraph (a) of this section,

starts on the date that a full fee has been paid;

(2) The date when a deﬁciency payment is

paid in full determines the amount of deﬁciency that

is due, pursuant to paragraph (c) of this section.

excused. If status as a small entity is established in

good faith, and fees as a small entity are paid in

good faith, in any application or patent, and it is

later discovered that such status as a small entity

was established in error, or that through error the

Ofﬁce was not notiﬁed of a loss of entitlement to

small entity status as required by § 1.27(g)(2), the

error will be excused upon: compliance with the

separate submission and itemization requirements

R-52January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.28

of paragraphs (c)(1) and (c)(2) of this section, and

the deﬁciency payment requirement of paragraph

(c)(2) of this section:

(1) Separate submission required for each

application or patent. Any paper submitted under

this paragraph must be limited to the deﬁciency

payment (all fees paid in error), required by

paragraph (c)(2) of this section, for one application

or one patent. Where more than one application or

patent is involved, separate submissions of

deﬁciency payments (e.g., checks) and itemizations

are required for each application or patent. See §

1.4(b).

(2) Payment of deﬁciency owed. The

deﬁciency owed, resulting from the previous

erroneous payment of small entity fees, must be

paid.

(i) Calculation of the deﬁciency owed.

The deﬁciency owed for each previous fee

erroneously paid as a small entity is the difference

between the current fee amount (for other than a

small entity) on the date the deﬁciency is paid in

full and the amount of the previous erroneous (small

entity) fee payment. The total deﬁciency payment

owed is the sum of the individual deﬁciency owed

amounts for each fee amount previously erroneously

paid as a small entity. Where a fee paid in error as

a small entity was subject to a fee decrease between

the time the fee was paid in error and the time the

deﬁciency is paid in full, the deﬁciency owed is

equal to the amount (previously) paid in error;

(ii) Itemization of the deﬁciency

payment. An itemization of the total deﬁciency

payment is required. The itemization must include

the following information:

(A) Each particular type of fee that

was erroneously paid as a small entity, (e.g., basic

statutory ﬁling fee, two-month extension of time

fee) along with the current fee amount for a

non-small entity;

(B) The small entity fee actually paid,

and when. This will permit the Ofﬁce to

differentiate, for example, between two one-month

extension of time fees erroneously paid as a small

entity but on different dates;

each fee erroneously paid); and

(D) The total deﬁciency payment

owed, which is the sum or total of the individual

deﬁciency owed amounts set forth in paragraph

(c)(2)(ii)(C) of this section.

(3) Failure to comply with requirements. If

the requirements of paragraphs (c)(1) and (c)(2) of

this section are not complied with, such failure will

either: be treated as an authorization for the Ofﬁce

to process the deﬁciency payment and charge the

processing fee set forth in § 1.17(i), or result in a

requirement for compliance within a one-month

non-extendable time period under § 1.136(a) to

avoid the return of the fee deﬁciency paper, at the

option of the Ofﬁce.

(d) Payment of deﬁciency operates as

notiﬁcation of loss of status. Any deﬁciency

payment (based on a previous erroneous payment

of a small entity fee) submitted under paragraph (c)

of this section will be treated under § 1.27(g)(2) as

a notiﬁcation of a loss of entitlement to small entity

status.

[47 FR 40140, Sept. 10, 1982, added effective Oct.

1, 1982; para. (a), 49 FR 553, Jan. 4, 1984, effective Apr.

1, 1984; para. (d)(2), 57 FR 2021, Jan. 17, 1992, effective

Mar. 16, 1992; para. (c) revised, 58 FR 54504, Oct. 22,

1993, effective Jan. 3, 1994; para. (a) revised, 60 FR

20195, Apr. 25, 1995, effective June 8, 1995; paras. (a)

& (c) revised, 62 FR 53132, Oct. 10 1997, effective Dec.

1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000]

§ 1.29 Micro entity status.

(a) To establish micro entity status under this

paragraph, the applicant must certify that:

(1) The applicant qualiﬁes as a small entity

as deﬁned in § 1.27;

(2) Neither the applicant nor the inventor

nor a joint inventor has been named as the inventor

or a joint inventor on more than four previously ﬁled

patent applications, other than applications ﬁled in

another country, provisional applications under 35

U.S.C. 111(b), or international applications for

which the basic national fee under 35 U.S.C. 41(a)

was not paid;

(3) Neither the applicant nor the inventor

nor a joint inventor, in the calendar year preceding

the calendar year in which the applicable fee is being

paid, had a gross income, as deﬁned in section 61(a)

of the Internal Revenue Code of 1986 (26 U.S.C.

January 2018R-53

§ 1.29CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

61(a)), exceeding three times the median household

income for that preceding calendar year, as most

recently reported by the Bureau of the Census; and

(4) Neither the applicant nor the inventor

nor a joint inventor has assigned, granted, or

conveyed, nor is under an obligation by contract or

law to assign, grant, or convey, a license or other

ownership interest in the application concerned to

an entity that, in the calendar year preceding the

calendar year in which the applicable fee is being

paid, had a gross income, as deﬁned in section 61(a)

of the Internal Revenue Code of 1986, exceeding

three times the median household income for that

preceding calendar year, as most recently reported

by the Bureau of the Census.

(b) An applicant, inventor, or joint inventor is

not considered to be named on a previously ﬁled

application for purposes of paragraph (a)(2) of this

section if the applicant, inventor, or joint inventor

has assigned, or is under an obligation by contract

or law to assign, all ownership rights in the

application as the result of the applicant’s,

inventor’s, or joint inventor’s previous employment.

or entity’s gross income in the preceding calendar

year is not in United States dollars, the average

currency exchange rate, as reported by the Internal

Revenue Service, during that calendar year shall be

used to determine whether the applicant’s,

inventor’s, joint inventor’s, or entity’s gross income

exceeds the threshold speciﬁed in paragraph (a)(3)

or (4) of this section.

(d) To establish micro entity status under this

paragraph, the applicant must certify that:

(1) The applicant qualiﬁes as a small entity

as deﬁned in § 1.27; and

(2)(i) The applicant’s employer, from

which the applicant obtains the majority of the

applicant’s income, is an institution of higher

education as deﬁned in section 101(a) of the Higher

Education Act of 1965 (20 U.S.C. 1001(a)); or

(ii) The applicant has assigned, granted,

conveyed, or is under an obligation by contract or

law, to assign, grant, or convey, a license or other

ownership interest in the particular application to

such an institution of higher education.

(e) Micro entity status is established in an

application by ﬁling a micro entity certiﬁcation in

writing complying with the requirements of either

paragraph (a) or (d) of this section and signed either

in compliance with § 1.33(b), in an international

application ﬁled in a Receiving Ofﬁce other than

the United States Receiving Ofﬁce by a person

authorized to represent the applicant under § 1.455,

or in an international design application by a person

authorized to represent the applicant under § 1.1041

before the International Bureau where the micro

entity certiﬁcation is ﬁled with the International

Bureau. Status as a micro entity must be speciﬁcally

established in each related, continuing and reissue

application in which status is appropriate and

desired. Status as a micro entity in one application

or patent does not affect the status of any other

application or patent, regardless of the relationship

of the applications or patents. The reﬁling of an

application under § 1.53 as a continuation,

divisional, or continuation-in-part application

(including a continued prosecution application under

§ 1.53(d)), or the ﬁling of a reissue application,

requires a new certiﬁcation of entitlement to micro

entity status for the continuing or reissue application.

(f) A fee may be paid in the micro entity amount

only if it is submitted with, or subsequent to, the

submission of a certiﬁcation of entitlement to micro

entity status.

(g) A certiﬁcation of entitlement to micro entity

status need only be ﬁled once in an application or

patent. Micro entity status, once established, remains

in effect until changed pursuant to paragraph (i) of

this section. However, a fee may be paid in the

micro entity amount only if status as a micro entity

as deﬁned in paragraph (a) or (d) of this section is

appropriate on the date the fee is being paid. Where

an assignment of rights or an obligation to assign

rights to other parties who are micro entities occurs

subsequent to the ﬁling of a certiﬁcation of

entitlement to micro entity status, a second

certiﬁcation of entitlement to micro entity status is

not required.

(h) Prior to submitting a certiﬁcation of

entitlement to micro entity status in an application,

including a related, continuing, or reissue

application, a determination of such entitlement

should be made pursuant to the requirements of this

section. It should be determined that each applicant

qualiﬁes for micro entity status under paragraph (a)

or (d) of this section, and that any other party

holding rights in the invention qualiﬁes for small

R-54January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.29

entity status under § 1.27. The Ofﬁce will generally

not question certiﬁcation of entitlement to micro

entity status that is made in accordance with the

requirements of this section.

(i) Notiﬁcation of a loss of entitlement to micro

entity status must be ﬁled in the application or patent

prior to paying, or at the time of paying, any fee

after the date on which status as a micro entity as

deﬁned in paragraph (a) or (d) of this section is no

longer appropriate. The notiﬁcation that micro entity

status is no longer appropriate must be signed by a

party identiﬁed in § 1.33(b). Payment of a fee in

other than the micro entity amount is not sufﬁcient

notiﬁcation that micro entity status is no longer

appropriate. A notiﬁcation that micro entity status

is no longer appropriate will not be treated as a

notiﬁcation that small entity status is also no longer

appropriate unless it also contains a notiﬁcation of

loss of entitlement to small entity status under §

1.27(f)(2)[1.27(g)(2)]. Once a notiﬁcation of a loss

of entitlement to micro entity status is ﬁled in the

application or patent, a new certiﬁcation of

entitlement to micro entity status is required to again

obtain micro entity status.

(j) Any attempt to fraudulently establish status

as a micro entity, or pay fees as a micro entity, shall

be considered as a fraud practiced or attempted on

the Ofﬁce. Improperly, and with intent to deceive,

establishing status as a micro entity, or paying fees

as a micro entity, shall be considered as a fraud

practiced or attempted on the Ofﬁce.

(k) If status as a micro entity is established in

good faith in an application or patent, and fees as a

micro entity are paid in good faith in the application

or patent, and it is later discovered that such micro

entity status either was established in error, or that

the Ofﬁce was not notiﬁed of a loss of entitlement

to micro entity status as required by paragraph (i)

of this section through error, the error will be

excused upon compliance with the separate

submission and itemization requirements of

paragraph (k)(1) of this section and the deﬁciency

payment requirement of paragraph (k)(2) of this

section.

(1) Any paper submitted under this

paragraph must be limited to the deﬁciency payment

(all fees paid in error) required for a single

application or patent. Where more than one

application or patent is involved, separate

submissions of deﬁciency payments are required

for each application or patent (see § 1.4(b)). The

paper must contain an itemization of the total

deﬁciency payment for the single application or

patent and include the following information:

(i) Each particular type of fee that was

erroneously paid as a micro entity, (e.g., basic

statutory ﬁling fee, two-month extension of time

fee) along with the current fee amount for a small

or non-small entity, as applicable;

(ii) The micro entity fee actually paid,

and the date on which it was paid;

(iii) The deﬁciency owed amount (for

each fee erroneously paid); and

(iv) The total deﬁciency payment owed,

which is the sum or total of the individual deﬁciency

owed amounts as set forth in paragraph (k)(2) of

this section.

(2) The deﬁciency owed, resulting from the

previous erroneous payment of micro entity fees,

must be paid. The deﬁciency owed for each previous

fee erroneously paid as a micro entity is the

difference between the current fee amount for a

small entity or non-small entity, as applicable, on

the date the deﬁciency is paid in full and the amount

of the previous erroneous micro entity fee payment.

The total deﬁciency payment owed is the sum of

the individual deﬁciency owed amounts for each

fee amount previously and erroneously paid as a

micro entity.

(3) If the requirements of paragraphs (k)(1)

and (2) of this section are not complied with, such

failure will either be treated at the option of the

Ofﬁce as an authorization for the Ofﬁce to process

the deﬁciency payment and charge the processing

fee set forth in § 1.17(i), or result in a requirement

for compliance within a one-month time period that

is not extendable under § 1.136(a) to avoid the return

of the fee deﬁciency payment.

(4) Any deﬁciency payment (based on a

previous erroneous payment of a micro entity fee)

submitted under this paragraph will be treated as a

notiﬁcation of a loss of entitlement to micro entity

status under paragraph (i) of this section.

[Added, 77 FR 75019, Dec. 19, 2012, effective

Mar. 19, 2013; paras. (e) and (k)(4) revised, 78 FR 62368,

Oct. 21, 2013, effective Dec. 18, 2013; para. (e) revised,

80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

January 2018R-55

§ 1.29CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Subpart B — National Processing Provisions

PROSECUTION OF APPLICATION AND

APPOINTMENT OF ATTORNEY OR

AGENT

§ 1.31 Applicant may be represented by one

or more patent practitioners or joint

inventors.

An applicant for patent may ﬁle and prosecute the

applicant’s own case, or the applicant may give

power of attorney so as to be represented by one or

more patent practitioners or joint inventors, except

that a juristic entity (e.g., organizational assignee)

must be represented by a patent practitioner even if

the juristic entity is the applicant. The Ofﬁce cannot

aid in the selection of a patent practitioner.

[50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985;

revised, 69 FR 29865, May 26, 2004, effective June 25,

2004; revised 69 FR 35427, June 24, 2004, effective July

26, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective

Nov. 25, 2005; revised, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012]

§ 1.32 Power of attorney.

[Editor Note: Certain* paragraphs below include

changes applicable only to patent applications ﬁled under

35 U.S.C. 111, 363, or 385 on or after September 16,

2012]

(a) Deﬁnitions.

(1) Patent practitioner means a registered

patent attorney or registered patent agent under §

11.6.

(2) Power of attorney means a written

document by which a principal authorizes one or

more patent practitioners or joint inventors to act

on the principal’s behalf.

(3) Principal means the applicant (§ 1.42)

for an application for patent and the patent owner

for a patent, including a patent in a supplemental

examination or reexamination proceeding. The

principal executes a power of attorney designating

one or more patent practitioners or joint inventors

to act on the principal’s behalf.

(4) Revocation means the cancellation by

the principal of the authority previously given to a

patent practitioner or joint inventor to act on the

principal’s behalf.

(5) Customer Number means a number that

may be used to:

(i) Designate the correspondence address

of a patent application or patent such that the

correspondence address for the patent application,

patent or other patent proceeding would be the

address associated with the Customer Number;

(ii) Designate the fee address (§ 1.363)

of a patent such that the fee address for the patent

would be the address associated with the Customer

Number; and

(iii) Submit a list of patent practitioners

such that those patent practitioners associated with

the Customer Number would have power of

attorney.

(6) Patent practitioner of record means

a patent practitioner who has been granted a power

of attorney in an application, patent, or other

proceeding in compliance with paragraph (b) of this

section. The phrases practitioner of record and

attorney or agent of record also mean a patent

practitioner who has been granted a power of

attorney in an application, patent, or other

proceeding in compliance with paragraph (b) of this

section.

(b) A power of attorney must:

(1) Be in writing;

(2) Name one or more representatives in

compliance with paragraph (c) of this section;

(3) Give the representative power to act on

behalf of the principal; and

(4) Be signed by the applicant for patent (§

1.42) or the patent owner. A patent owner who was

not the applicant under § 1.46 must appoint any

power of attorney in compliance with §§ 3.71 and

3.73 of this chapter.

representative:

(1) One or more joint inventors (§ 1.45 );

(2) Those registered patent practitioners

associated with a Customer Number;

(3) Ten or fewer patent practitioners, stating

the name and registration number of each patent

practitioner. Except as provided in paragraph (c)(1)

R-56January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.31

or (c)(2) of this section, the Ofﬁce will not recognize

more than ten patent practitioners as being of record

in an application or patent. If a power of attorney

names more than ten patent practitioners, such

power of attorney must be accompanied by a

separate paper indicating which ten patent

practitioners named in the power of attorney are to

be recognized by the Ofﬁce as being of record in

the application or patent to which the power of

attorney is directed.

(d) A power of attorney from a prior national

application for which beneﬁt is claimed under 35

U.S.C. 120, 121, 365(c), or 386(c) in a continuing

application may have effect in the continuing

application if a copy of the power of attorney from

the prior application is ﬁled in the continuing

application unless:

(1) The power of attorney was granted by

the inventor; and

(2) The continuing application names an

inventor who was not named as an inventor in the

prior application.

(e) If the power of attorney was granted by the

originally named inventive entity, and an added

inventor pursuant to § 1.48 does not provide a power

of attorney consistent with the power of attorney

granted by the originally named inventive entity,

the addition of the inventor results in the loss of that

power of attorney upon grant of the § 1.48 request.

This provision does not preclude a practitioner from

acting pursuant to § 1.34, if applicable.

[Added, 69 FR 29865, May 26, 2004, effective

June 25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119,

Sept. 26, 2005, effective Nov. 25, 2005; para. (d)

introductory text revised, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

[* Paras. (a)(2), (a)(3), (a)(4), (a)(6), (b), (d) and

(e) above include provisions applicable only to patent

applications ﬁled on or after Sept. 16, 2012. See § 1.32

(pre-AIA) for the rule applicable to applications ﬁled

prior to Sept. 16, 2012.]

§ 1.32 (pre-AIA) Power of attorney.

[Editor Note: Certain* paragraphs below are not

applicable to patent applications ﬁled under 35 U.S.C.

111, 363, or 385 on or after Sept. 16, 2012]

(a) Deﬁnitions.

(1) Patent practitioner means a registered

patent attorney or registered patent agent under §

11.6.

(2) Power of attorney means a written

document by which a principal authorizes one or

more patent practitioners or joint inventors to act

on his or her behalf.

(3) Principal means either an applicant for

patent (§ 1.41(b)) or an assignee of entire interest

of the applicant for patent or in a reexamination

proceeding, the assignee of the entirety of ownership

of a patent. The principal executes a power of

attorney designating one or more patent practitioners

or joint inventors to act on his or her behalf.

(4) Revocation means the cancellation by

the principal of the authority previously given to a

patent practitioner or joint inventor to act on his or

her behalf.

(5) Customer Number means a number that

may be used to:

(i) Designate the correspondence address

of a patent application or patent such that the

correspondence address for the patent application,

patent or other patent proceeding would be the

address associated with the Customer Number;

(ii) Designate the fee address (§ 1.363)

of a patent such that the fee address for the patent

would be the address associated with the Customer

Number; and

(iii) Submit a list of patent practitioners

such that those patent practitioners associated with

the Customer Number would have power of

attorney.

(b) A power of attorney must:

(1) Be in writing;

(2) Name one or more representatives in

compliance with paragraph (c) of this section;

(3) Give the representative power to act on

behalf of the principal; and

(4) Be signed by the applicant for patent (§

1.41(b)) or the assignee of the entire interest of the

applicant.

representative:

(1) One or more joint inventors (§ 1.45);

January 2018R-57

§ 1.32

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(2) Those registered patent practitioners

associated with a Customer Number;

(3) Ten or fewer patent practitioners, stating

the name and registration number of each patent

practitioner. Except as provided in paragraph (c)(1)

or (c)(2) of this section, the Ofﬁce will not recognize

more than ten patent practitioners as being of record

in an application or patent. If a power of attorney

names more than ten patent practitioners, such

power of attorney must be accompanied by a

separate paper indicating which ten patent

practitioners named in the power of attorney are to

be recognized by the Ofﬁce as being of record in

the application or patent to which the power of

attorney is directed.

[Added, 69 FR 29865, May 26, 2004, effective

June 25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119,

Sept. 26, 2005, effective Nov. 25, 2005]

[*See § 1.32 for more information and for the rule

applicable to patent applications ﬁled on or after Sept.

16, 2012]

§ 1.33 Correspondence respecting patent

applications, reexamination proceedings, and

other proceedings.

[Editor Note: Certain* paragraphs below are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after September 16, 2012]

(a) Correspondence address and daytime

telephone number. When ﬁling an application, a

correspondence address must be set forth in either

an application data sheet (§ 1.76), or elsewhere, in

a clearly identiﬁable manner, in any paper submitted

with an application ﬁling. If no correspondence

address is speciﬁed, the Ofﬁce may treat the mailing

address of the ﬁrst named inventor (if provided, see

§§ 1.76(b)(1) and 1.63(b)(2)) as the correspondence

address. The Ofﬁce will direct, or otherwise make

available, all notices, ofﬁcial letters, and other

communications relating to the application to the

person associated with the correspondence address.

For correspondence submitted via the Ofﬁce’s

electronic ﬁling system, however, an electronic

acknowledgment receipt will be sent to the

submitter. The Ofﬁce will generally not engage in

double correspondence with an applicant and a

patent practitioner, or with more than one patent

practitioner except as deemed necessary by the

Director. If more than one correspondence address

is speciﬁed, the Ofﬁce will select one of the

speciﬁed addresses for use as the correspondence

address and, if given, may select the address

associated with a Customer Number over a typed

correspondence address. For the party to whom

correspondence is to be addressed, a daytime

telephone number should be supplied in a clearly

identiﬁable manner and may be changed by any

party who may change the correspondence address.

The correspondence address may be changed by the

parties set forth in paragraph (b)(1) or (b)(3) of this

section. Prior to the appointment of any power of

attorney under § 1.32(b), the correspondence address

may also be changed by any patent practitioner

named in the application transmittal papers who acts

in a representative capacity under the provisions of

§ 1.34.

(b) Amendments and other papers.

Amendments and other papers, except for written

assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv),

ﬁled in the application must be signed by:

(1) A patent practitioner of record;

(2) A patent practitioner not of record who

acts in a representative capacity under the provisions

of § 1.34; or

(3) The applicant (§ 1.42). Unless otherwise

speciﬁed, all papers submitted on behalf of a juristic

entity must be signed by a patent practitioner.

communications for the patent owner or owners in

a reexamination or supplemental examination

proceeding will be directed to the correspondence

address in the patent ﬁle. Amendments ﬁled in a

reexamination proceeding, and other papers ﬁled in

a reexamination or supplemental examination

proceeding, on behalf of the patent owner must be

signed by the patent owner, or if there is more than

one owner by all the owners, or by an attorney or

agent of record in the patent ﬁle, or by a registered

attorney or agent not of record who acts in a

representative capacity under the provisions of §

1.34. Double correspondence with the patent owner

or owners and the patent owner’s attorney or agent,

or with more than one attorney or agent, will not be

undertaken.

(d) A “correspondence address” or change

thereto may be ﬁled with the Patent and Trademark

Ofﬁce during the enforceable life of the patent. The

“correspondence address” will be used in any

R-58January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.33

correspondence relating to maintenance fees unless

a separate “fee address” has been speciﬁed. See §

1.363 for “fee address” used solely for maintenance

fee purposes.

(e) A change of address ﬁled in a patent

application or patent does not change the address

for a patent practitioner in the roster of patent

attorneys and agents. See § 11.11 of this title.

(f) Where application papers from a prior

application are used in a continuing application and

the correspondence address was changed during the

prosecution of the prior application, an application

data sheet or separate paper identifying the

correspondence address to be used for the continuing

application must be submitted. Otherwise, the Ofﬁce

may not recognize the change of correspondence

address effected during the prosecution of the prior

application.

(g) A patent practitioner acting in a

representative capacity whose correspondence

address is the correspondence address of record in

an application may change the correspondence

address after the patent has issued, provided that the

change of correspondence address is accompanied

by a statement that notice has been given to the

patentee or owner.

[36 FR 12617, July 2, 1971; 46 FR 29181, May

29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984,

effective Nov. 1, 1984; para. (c), 50 FR 5171, Feb. 6,

1985, effective Mar. 8, 1985; paras. (a) & (b) revised, 62

FR 53132, Oct. 10 1997, effective Dec. 1, 1997; paras.

(a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003; (a) introductory text, (b)

introductory text, and paras. (b)(1), (b)(2) and (c) revised,

69 FR 29865, May 26, 2004, effective June 25, 2004;

para. (c) revised, 69 FR 35427, June 24, 2004, effective

July 26, 2004; para. (c) revised, 70 FR 3880, Jan. 27,

2005, effective Dec. 8, 2004; para. (a) introductory text

revised, paras. (a)(1), (b)(1), and (b)(2) revised, and para.

(e) added, 70 FR 56119, Sept. 26, 2005, effective Nov.

25, 2005; para. (a) introductory text revised, 72 FR 2770,

Jan. 23, 2007, effective Jan. 23, 2007; para. (c) revised,

72 FR 18892, Apr. 16, 2007, effective May 16, 2007;

paras. (a) and (b) revised and paras. (f) and (g) added, 77

FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para.

18, 2013]

[*The revisions to paras. (a) and (b) and new

paragraphs (f) and (g) effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.33 (pre-AIA) for the rule otherwise in effect.]

§ 1.33 (pre-AIA) Correspondence respecting

patent applications, reexamination

proceedings, and other proceedings.

[Editor Note: The paragraphs below are applicable

only to patent applications ﬁled under 35 U.S.C. 111

(pre-AIA) or 363 (pre-AIA) before Sept. 16, 2012]

(a) Correspondence address and daytime

telephone number. When ﬁling an application, a

correspondence address must be set forth in either

an application data sheet (§ 1.76 ), or elsewhere, in

a clearly identiﬁable manner, in any paper submitted

with an application ﬁling. If no correspondence

address is speciﬁed, the Ofﬁce may treat the mailing

address of the ﬁrst named inventor (if provided, see

§§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence

address. The Ofﬁce will direct, or otherwise make

available, all notices, ofﬁcial letters, and other

communications relating to the application to the

person associated with the correspondence address.

For correspondence submitted via the Ofﬁce’s

electronic ﬁling system, however, an electronic

acknowledgment receipt will be sent to the

submitter. The Ofﬁce will generally not engage in

double correspondence with an applicant and a

patent practitioner, or with more than one patent

practitioner except as deemed necessary by the

Director. If more than one correspondence address

is speciﬁed in a single document, the Ofﬁce will

select one of the speciﬁed addresses for use as the

correspondence address and, if given, will select the

address associated with a Customer Number over a

typed correspondence address. For the party to

whom correspondence is to be addressed, a daytime

telephone number should be supplied in a clearly

identiﬁable manner and may be changed by any

party who may change the correspondence address.

The correspondence address may be changed as

follows:

(1) Prior to ﬁling of § 1.63 oath or

declaration by any of the inventors. If a § 1.63 oath

or declaration has not been ﬁled by any of the

inventors, the correspondence address may be

changed by the party who ﬁled the application. If

the application was ﬁled by a patent practitioner,

any other patent practitioner named in the transmittal

papers may also change the correspondence address.

Thus, the inventor(s), any patent practitioner named

January 2018R-59

§ 1.33

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

in the transmittal papers accompanying the original

application, or a party that will be the assignee who

ﬁled the application, may change the correspondence

address in that application under this paragraph.

(2) Where a § 1.63 oath or declaration has

been ﬁled by any of the inventors. If a § 1.63 oath

or declaration has been ﬁled, or is ﬁled concurrent

with the ﬁling of an application, by any of the

inventors, the correspondence address may be

changed by the parties set forth in paragraph (b) of

this section, except for paragraph (b)(2).

(b) Amendments and other papers.

Amendments and other papers, except for written

assertions pursuant to § 1.27(c)(2)(ii) of this part,

ﬁled in the application must be signed by:

(1) A patent practitioner of record appointed

in compliance with § 1.32(b);

(2) A patent practitioner not of record who

acts in a representative capacity under the provisions

of § 1.34;

(3) An assignee as provided for under §

3.71(b) of this chapter; or

(4) All of the applicants (§ 1.41(b)) for

patent, unless there is an assignee of the entire

interest and such assignee has taken action in the

application in accordance with § 3.71 of this chapter.

*****

[*See § 1.33 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.34 Acting in a representative capacity.

When a patent practitioner acting in a representative

capacity appears in person or signs a paper in

practice before the United States Patent and

Trademark Ofﬁce in a patent case, his or her

personal appearance or signature shall constitute a

representation to the United States Patent and

Trademark Ofﬁce that under the provisions of this

subchapter and the law, he or she is authorized to

represent the particular party on whose behalf he or

she acts. In ﬁling such a paper, the patent

practitioner must set forth his or her registration

number, his or her name and signature. Further proof

of authority to act in a representative capacity may

be required.

[46 FR 29181, May 29, 1981; para. (a), 50 FR

5171, Feb. 6, 1985, effective Mar. 6, 1985; revised, 65

FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised,

69 FR 29865, May 26, 2004, effective June 25, 2004;

revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25,

2005]

§ 1.36 Revocation of power of attorney;

withdrawal of patent attorney or agent.

[Editor Note: Para. (a) below includes changes

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after September 16, 2012*]

(a) A power of attorney, pursuant to § 1.32(b),

may be revoked at any stage in the proceedings of

a case by the applicant or patent owner. A power of

attorney to the patent practitioners associated with

a Customer Number will be treated as a request to

revoke any powers of attorney previously given.

Fewer than all of the applicants (or fewer than all

patent owners in a supplemental examination or

reexamination proceeding) may revoke the power

of attorney only upon a showing of sufﬁcient cause,

and payment of the petition fee set forth in § 1.17(f).

A patent practitioner will be notiﬁed of the

revocation of the power of attorney. Where power

of attorney is given to the patent practitioners

associated with a Customer Number (§ 1.32(c)(2)),

the practitioners so appointed will also be notiﬁed

of the revocation of the power of attorney when the

power of attorney to all of the practitioners

associated with the Customer Number is revoked.

The notice of revocation will be mailed to the

correspondence address for the application (§ 1.33

) in effect before the revocation. An assignment will

not of itself operate as a revocation of a power

previously given, but the assignee may become the

applicant under § 1.46(c) and revoke any previous

power of attorney and grant a power of attorney as

provided in § 1.32(b).

(b) A registered patent attorney or patent agent

who has been given a power of attorney pursuant

to § 1.32(b) may withdraw as attorney or agent of

record upon application to and approval by the

Director. The applicant or patent owner will be

notiﬁed of the withdrawal of the registered patent

attorney or patent agent. Where power of attorney

is given to the patent practitioners associated with

a Customer Number, a request to delete all of the

patent practitioners associated with the Customer

Number may not be granted if an applicant has given

R-60January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.34

power of attorney to the patent practitioners

associated with the Customer Number in an

application that has an Ofﬁce action to which a reply

is due, but insufﬁcient time remains for the applicant

to ﬁle a reply. See § 41.5 of this title for withdrawal

during proceedings before the Patent Trial and

Appeal Board.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11,

1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov.

7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 69 FR 29865, May 26, 2004,

effective June 25, 2004; revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; para. (a) revised, 70 FR

56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (b)

revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16,

2012]

[*The changes to para. (a) effective Sept. 16, 2012

are applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.36 (pre-AIA) for the rule otherwise in effect.]

§ 1.36 (pre-AIA) Revocation of power of

attorney; withdrawal of patent attorney or

agent.

[Editor Note: Para. (a) below is not applicable to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after September 16, 2012*]

(a) A power of attorney, pursuant to § 1.32(b),

may be revoked at any stage in the proceedings of

a case by an applicant for patent (§ 1.41(b)) or an

assignee of the entire interest of the applicant, or

the owner of the entire interest of a patent. A power

of attorney to the patent practitioners associated

with a Customer Number will be treated as a request

to revoke any powers of attorney previously given.

Fewer than all of the applicants (or fewer than all

of the assignees of the entire interest of the applicant

or, in a reexamination proceeding, fewer than all

the owners of the entire interest of a patent) may

revoke the power of attorney only upon a showing

of sufﬁcient cause, and payment of the petition fee

set forth in § 1.17(f). A patent practitioner will be

notiﬁed of the revocation of the power of attorney.

Where power of attorney is given to the patent

practitioners associated with a Customer Number

(§ 1.32(c)(2)), the practitioners so appointed will

also be notiﬁed of the revocation of the power of

attorney when the power of attorney to all of the

practitioners associated with the Customer Number

is revoked. The notice of revocation will be mailed

to the correspondence address for the application (§

1.33) in effect before the revocation. An assignment

will not of itself operate as a revocation of a power

previously given, but the assignee of the entire

interest of the applicant may revoke previous powers

of attorney and give another power of attorney of

the assignee’s own selection as provided in §

1.32(b).

(b) A registered patent attorney or patent agent

who has been given a power of attorney pursuant

to § 1.32(b) may withdraw as attorney or agent of

record upon application to and approval by the

Director. The applicant or patent owner will be

notiﬁed of the withdrawal of the registered patent

attorney or patent agent. Where power of attorney

is given to the patent practitioners associated with

a Customer Number, a request to delete all of the

patent practitioners associated with the Customer

Number may not be granted if an applicant has given

power of attorney to the patent practitioners

associated with the Customer Number in an

application that has an Ofﬁce action to which a reply

is due, but insufﬁcient time remains for the applicant

to ﬁle a reply. See § 41.5 of this title for withdrawal

during proceedings before the Patent Trial and

Appeal Board.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11,

1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov.

7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 69 FR 29865, May 26, 2004,

effective June 25, 2004; revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; para. (a) revised, 70 FR

56119, Sept. 26, 2005, effective Nov. 25, 2005; para. (b)

revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16,

2012]

[*See § 1.36 for more information and for para.

(a) applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

WHO MAY APPLY FOR A PATENT

§ 1.41 Inventorship.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) An application must include, or be amended

to include, the name of the inventor for any

invention claimed in the application.

January 2018R-61

§ 1.41CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(b) The inventorship of a nonprovisional

application under 35 U.S.C. 111(a) is the inventor

or joint inventors set forth in the application data

sheet in accordance with § 1.76 ﬁled before or

concurrently with the inventor’s oath or declaration.

If an application data sheet is not ﬁled before or

concurrently with the inventor’s oath or declaration,

the inventorship is the inventor or joint inventors

set forth in the inventor’s oath or declaration, except

as provided for in §§ 1.53(d)(4) and 1.63(d). Once

an application data sheet or the inventor’s oath or

declaration is ﬁled in a nonprovisional application,

any correction of inventorship must be pursuant to

§ 1.48. If neither an application data sheet nor the

inventor’s oath or declaration is ﬁled during the

pendency of a nonprovisional application, the

inventorship is the inventor or joint inventors set

forth in the application papers ﬁled pursuant to §

1.53(b), unless the applicant ﬁles a paper, including

the processing fee set forth in § 1.17(i), supplying

the name or names of the inventor or joint inventors.

is the inventor or joint inventors set forth in the

cover sheet as prescribed by § 1.51(c)(1). Once a

cover sheet as prescribed by § 1.51(c)(1) is ﬁled in

a provisional application, any correction of

inventorship must be pursuant to § 1.48. If a cover

sheet as prescribed by § 1.51(c)(1) is not ﬁled during

the pendency of a provisional application, the

inventorship is the inventor or joint inventors set

forth in the application papers ﬁled pursuant to §

1.53(c), unless applicant ﬁles a paper including the

processing fee set forth in § 1.17(q), supplying the

name or names of the inventor or joint inventors..

(d) In a nonprovisional application under 35

U.S.C. 111(a) ﬁled without an application data sheet

or the inventor’s oath or declaration, or in a

provisional application ﬁled without a cover sheet

as prescribed by § 1.51(c)(1), the name and

residence of each person believed to be an actual

inventor should be provided when the application

papers pursuant to § 1.53(b) or § 1.53(c) are ﬁled.

(e) The inventorship of an international

application entering the national stage under 35

U.S.C. 371 is the inventor or joint inventors set forth

in the application data sheet in accordance with §

1.76 ﬁled with the initial submission under 35

U.S.C. 371. Unless the initial submission under 35

U.S.C. 371 is accompanied by an application data

sheet in accordance with § 1.76 setting forth the

inventor or joint inventors, the inventorship is the

inventor or joint inventors set forth in the

international application, which includes any change

effected under PCT Rule 92 bis.

(f) The inventorship of an international design

application designating the United States is the

creator or creators set forth in the publication of the

international registration under Hague Agreement

Article 10(3). Any correction of inventorship must

be pursuant to § 1.48.

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31,

1983; para. (a) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4)

revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002;

revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16,

2012; para. (f) added, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.41 (pre-AIA) for the rule otherwise in effect.]

§ 1.41 (pre-AIA) Applicant for patent.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) A patent is applied for in the name or names

of the actual inventor or inventors.

(1) The inventorship of a nonprovisional

application is that inventorship set forth in the oath

or declaration as prescribed by § 1.63, except as

provided for in §§ 1.53(d)(4) and 1.63(d). If an oath

or declaration as prescribed by § 1.63 is not ﬁled

during the pendency of a nonprovisional application,

the inventorship is that inventorship set forth in the

application papers ﬁled pursuant to § 1.53(b), unless

applicant ﬁles a paper, including the processing fee

set forth in § 1.17(i), supplying or changing the

name or names of the inventor or inventors.

(2) The inventorship of a provisional

application is that inventorship set forth in the cover

sheet as prescribed by § 1.51(c)(1). If a cover sheet

as prescribed by § 1.51(c)(1) is not ﬁled during the

pendency of a provisional application, the

inventorship is that inventorship set forth in the

application papers ﬁled pursuant to § 1.53(c), unless

applicant ﬁles a paper including the processing fee

R-62January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.41 (pre-AIA)

set forth in § 1.17(q), supplying or changing the

name or names of the inventor or inventors.

(3) In a nonprovisional application ﬁled

without an oath or declaration as prescribed by §

1.63 or a provisional application ﬁled without a

cover sheet as prescribed by § 1.51(c)(1), the name,

residence, and citizenship of each person believed

to be an actual inventor should be provided when

the application papers pursuant to § 1.53(b) or §

1.53(c) are ﬁled.

(4) The inventorship of an international

application entering the national stage under 35

U.S.C. 371 is that inventorship set forth in the

international application, which includes any change

effected under PCT Rule 92 bis. See § 1.497(d) and

(f) for ﬁling an oath or declaration naming an

inventive entity different from the inventive entity

named in the international application, or if a change

to the inventive entity has been effected under PCT

Rule 92 bis subsequent to the execution of any

declaration ﬁled under PCT Rule 4.17(iv) (§

1.48(f)(1) does not apply to an international

application entering the national stage under 35

U.S.C. 371).

(b) Unless the contrary is indicated the word

“applicant” when used in these sections refers to the

inventor or joint inventors who are applying for a

patent, or to the person mentioned in §§ 1.42, 1.43

or 1.47 who is applying for a patent in place of the

inventor.

physically or electronically deliver an application

for patent to the Ofﬁce on behalf of the inventor or

inventors, but an oath or declaration for the

application (§ 1.63) can only be made in accordance

with § 1.64.

(d) A showing may be required from the person

ﬁling the application that the ﬁling was authorized

where such authorization comes into question.

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31,

1983; para. (a) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; paras. (a) and (c) revised, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4)

revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002]

[*See § 1.41 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.42 Applicant for patent.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) The word "applicant" when used in this title

refers to the inventor or all of the joint inventors, or

to the person applying for a patent as provided in

§§ 1.43, 1.45, or 1.46.

(b) If a person is applying for a patent as

provided in § 1.46, the word "applicant" refers to

the assignee, the person to whom the inventor is

under an obligation to assign the invention, or the

person who otherwise shows sufﬁcient proprietary

interest in the matter, who is applying for a patent

under § 1.46 and not the inventor.

for a patent as provided in § 1.45, the phrase "the

applicant" means the joint inventors who are

applying for the patent without the omitted

inventor(s).

(d) Any person having authority may deliver an

application and fees to the Ofﬁce on behalf of the

applicant. However, an oath or declaration, or

substitute statement in lieu of an oath or declaration,

may be executed only in accordance with § 1.63 or

1.64, a correspondence address may be provided

only in accordance with § 1.33(a), and amendments

and other papers must be signed in accordance with

§ 1.33(b).

(e) The Ofﬁce may require additional

information where there is a question concerning

ownership or interest in an application, and a

showing may be required from the person ﬁling the

application that the ﬁling was authorized where such

authorization comes into question.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983; revised, 77 FR 48776, Aug. 14, 2012, effective

Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.42 (pre-AIA) for the rule otherwise in effect.]

§ 1.42 (pre-AIA) When the inventor is dead.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

January 2018R-63

§ 1.42

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

In case of the death of the inventor, the legal

representative (executor, administrator, etc.) of the

deceased inventor may make the necessary oath or

declaration, and apply for and obtain the patent.

Where the inventor dies during the time intervening

between the ﬁling of the application and the granting

of a patent thereon, the letters patent may be issued

to the legal representative upon proper intervention.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983]

[*See §1.42 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.43 Application for patent by a legal

representative of a deceased or legally

incapacitated inventor.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

If an inventor is deceased or under legal incapacity,

the legal representative of the inventor may make

an application for patent on behalf of the inventor.

If an inventor dies during the time intervening

between the ﬁling of the application and the granting

of a patent thereon, the letters patent may be issued

to the legal representative upon proper intervention.

See § 1.64 concerning the execution of a substitute

statement by a legal representative in lieu of an oath

or declaration.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983; revised, 77 FR 48776, Aug. 14, 2012, effective

Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.43 (pre-AIA)> for the rule otherwise in effect.]

§ 1.43 (pre-AIA) When the inventor is insane

or legally incapacitated.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

In case an inventor is insane or otherwise legally

incapacitated, the legal representative (guardian,

conservator, etc.) of such inventor may make the

necessary oath or declaration, and apply for and

obtain the patent.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983]

[*See § 1.43 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.44 [Reserved]

[Removed and reserved, 65 FR 54604, Sept. 8,

2000, effective Sept. 8, 2000]

§ 1.45 Application for patent by joint

inventors.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) Joint inventors must apply for a patent

jointly, and each must make an inventor’s oath or

declaration as required by § 1.63, except as provided

for in § 1.64. If a joint inventor refuses to join in an

application for patent or cannot be found or reached

after diligent effort, the other joint inventor or

inventors may make the application for patent on

behalf of themselves and the omitted inventor. See

§ 1.64 concerning the execution of a substitute

statement by the other joint inventor or inventors in

lieu of an oath or declaration.

(b) Inventors may apply for a patent jointly even

though:

(1) They did not physically work together

or at the same time;

(2) Each inventor did not make the same

type or amount of contribution; or

(3) Each inventor did not make a

contribution to the subject matter of every claim of

the application.

nonprovisional application, each named inventor

must have made a contribution, individually or

jointly, to the subject matter of at least one claim of

the application and the application will be

considered to be a joint application under 35 U.S.C.

116. If multiple inventors are named in a provisional

application, each named inventor must have made

a contribution, individually or jointly, to the subject

R-64January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.43

matter disclosed in the provisional application and

the provisional application will be considered to be

a joint application under 35 U.S.C. 116.

[paras. (b) and (c), 47 FR 41272, Sept. 17, 1982,

effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983,

effective Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985,

effective May 8, 1985; para. (c) revised, 60 FR 20195,

Apr. 25, 1995, effective June 8, 1995; revised, 77 FR

48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.45 (pre-AIA) for the rule otherwise in effect.]

§ 1.45 (pre-AIA) Joint inventors.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) Joint inventors must apply for a patent jointly

and each must make the required oath or declaration:

neither of them alone, nor less than the entire

number, can apply for a patent for an invention

invented by them jointly, except as provided in §

1.47.

(b) Inventors may apply for a patent jointly even

though

(1) They did not physically work together

or at the same time,

(2) Each inventor did not make the same

type or amount of contribution, or

(3) Each inventor did not make a

contribution to the subject matter of every claim of

the application.

nonprovisional application, each named inventor

must have made a contribution, individually or

jointly, to the subject matter of at least one claim of

the application and the application will be

considered to be a joint application under 35 U.S.C.

116. If multiple inventors are named in a provisional

application, each named inventor must have made

a contribution, individually or jointly, to the subject

matter disclosed in the provisional application and

the provisional application will be considered to be

a joint application under 35 U.S.C. 116.

[paras. (b) and (c), 47 FR 41272, Sept. 17, 1982,

effective Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983,

effective Feb. 27, 1983; 50 FR 9379, Mar. 7, 1985,

effective May 8, 1985; para. (c) revised, 60 FR 20195,

Apr. 25, 1995, effective June 8, 1995]

[*See § 1.45 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.46 Application for patent by an assignee,

obligated assignee, or a person who otherwise

shows sufﬁcient proprietary interest in the

matter.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a), 363, or 385 on or after

September 16, 2012*]

(a) A person to whom the inventor has assigned

or is under an obligation to assign the invention may

make an application for patent. A person who

otherwise shows sufﬁcient proprietary interest in

the matter may make an application for patent on

behalf of and as agent for the inventor on proof of

the pertinent facts and a showing that such action

is appropriate to preserve the rights of the parties.

(b) If an application under 35 U.S.C. 111 is

made by a person other than the inventor under

paragraph (a) of this section, the application must

contain an application data sheet under § 1.76

specifying in the applicant information section (§

1.76(b)(7)) the assignee, person to whom the

inventor is under an obligation to assign the

invention, or person who otherwise shows sufﬁcient

proprietary interest in the matter. If an application

entering the national stage under 35 U.S.C. 371, or

a nonprovisional international design application,

is applied for by a person other than the inventor

under paragraph (a) of this section, the assignee,

person to whom the inventor is under an obligation

to assign the invention, or person who otherwise

shows sufﬁcient proprietary interest in the matter

must have been identiﬁed as the applicant for the

United States in the international stage of the

international application or as the applicant in the

publication of the international registration under

Hague Agreement Article 10(3).

(1) If the applicant is the assignee or a person

to whom the inventor is under an obligation to assign

the invention, documentary evidence of ownership

(e.g., assignment for an assignee, employment

agreement for a person to whom the inventor is

under an obligation to assign the invention) should

be recorded as provided for in part 3 of this chapter

January 2018R-65

§ 1.46CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

no later than the date the issue fee is paid in the

application.

(2) If the applicant is a person who otherwise

shows sufﬁcient proprietary interest in the matter,

such applicant must submit a petition including:

(i) The fee set forth in § 1.17(g);

(ii) A showing that such person has

sufﬁcient proprietary interest in the matter; and

(iii) A statement that making the

application for patent by a person who otherwise

shows sufﬁcient proprietary interest in the matter

on behalf of and as agent for the inventor is

appropriate to preserve the rights of the parties.

(c)(1) Correction or update in the name of

the applicant. Any request to correct or update the

name of the applicant under this section must

include an application data sheet under § 1.76

specifying the correct or updated name of the

applicant in the applicant information section (§

1.76(b)(7)) in accordance with § 1.76(c)(2). A

change in the name of the applicant recorded

pursuant to Hague Agreement Article 16(1)(ii) will

be effective to change the name of the applicant in

a nonprovisional international design application.

(2) Change in the applicant. Any request to

change the applicant under this section after an

original applicant has been speciﬁed must include

an application data sheet under § 1.76 specifying

the applicant in the applicant information section (§

1.76(b)(7)) in accordance with § 1.76(c)(2) and

comply with §§ 3.71 and 3.73 of this title.

(d) Even if the whole or a part interest in the

invention or in the patent to be issued is assigned

or obligated to be assigned, an oath or declaration

must be executed by the actual inventor or each

actual joint inventor, except as provided for in §

1.64. See § 1.64 concerning the execution of a

substitute statement by an assignee, person to whom

the inventor is under an obligation to assign the

invention, or a person who otherwise shows

sufﬁcient proprietary interest in the matter.

(e) If a patent is granted on an application ﬁled

under this section by a person other than the

inventor, the patent shall be granted to the real party

in interest. Otherwise, the patent may be issued to

the assignee or jointly to the inventor and the

assignee as provided in § 3.81. Where a real party

in interest has ﬁled an application under § 1.46, the

applicant shall notify the Ofﬁce of any change in

the real party in interest no later than payment of

the issue fee. The Ofﬁce will treat the absence of

such a notice as an indication that there has been no

change in the real party in interest.

(f) The Ofﬁce may publish notice of the ﬁling

of the application by a person who otherwise shows

sufﬁcient proprietary interest in the Ofﬁcial Gazette.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992;

revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16,

2012; para. (b) introductory text and para. (c) revised, 80

FR 17918, Apr. 2, 2015, effective May 13, 2015]

[*The changes effective Sept. 16, 2012 and May

13, 2015 are applicable only to patent applications ﬁled

on or after Sept. 16, 2012. See § 1.46 (pre-AIA) for the

rule otherwise in effect.]

§ 1.46 (pre-AIA) Assigned inventions and

patents.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a), 363, or 385 on or after

September 16, 2012*]

In case the whole or a part interest in the invention

or in the patent to be issued is assigned, the

application must still be made or authorized to be

made, and an oath or declaration signed, by the

inventor or one of the persons mentioned in §§ 1.42,

1.43, or 1.47. However, the patent may be issued to

the assignee or jointly to the inventor and the

assignee as provided in § 3.81.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992]

[*See § 1.46 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.47 [Removed and Reserved]

[Removed and reserved with respect to patent

applications ﬁled under 35 U.S.C. 111(a) or 363 on or

after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012. For § 1.47 otherwise in effect,

see § 1.47 (pre-AIA)]

R-66January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.46 (pre-AIA)

§ 1.47 (pre-AIA) Filing when an inventor

refuses to sign or cannot be reached.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) If a joint inventor refuses to join in an

application for patent or cannot be found or reached

after diligent effort, the application may be made

by the other inventor on behalf of himself or herself

and the nonsigning inventor. The oath or declaration

in such an application must be accompanied by a

petition including proof of the pertinent facts, the

fee set forth in § 1.17(g), and the last known address

of the nonsigning inventor. The nonsigning inventor

may subsequently join in the application by ﬁling

an oath or declaration complying with § 1.63.

(b) Whenever all of the inventors refuse to

execute an application for patent, or cannot be found

or reached after diligent effort, a person to whom

an inventor has assigned or agreed in writing to

assign the invention, or who otherwise shows

sufﬁcient proprietary interest in the matter justifying

such action, may make application for patent on

behalf of and as agent for all the inventors. The oath

or declaration in such an application must be

accompanied by a petition including proof of the

pertinent facts, a showing that such action is

necessary to preserve the rights of the parties or to

prevent irreparable damage, the fee set forth in §

1.17(g), and the last known address of all of the

inventors. An inventor may subsequently join in the

application by ﬁling an oath or declaration

complying with § 1.63.

the application to all inventors who have not joined

in the application at the address(es) provided in the

petition under this section, and publish notice of the

ﬁling of the application in the Ofﬁcial Gazette. The

Ofﬁce may dispense with this notice provision in a

continuation or divisional application, if notice

regarding the ﬁling of the prior application was

given to the nonsigning inventor(s).

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983;

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov.

7, 2000; paras. (a) and (b) revised, 69 FR 56481, Sept.

21, 2004, effective Nov. 22, 2004]

[*Removed and reserved with respect to patent

applications ﬁled under 35 U.S.C. 111(a) or 363 on or

after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012.]

§ 1.48 Correction of inventorship pursuant

to 35 U.S.C. 116 or correction of the name

or order of names in a patent application,

other than a reissue application.

(a) Nonprovisional application: Any request

to correct or change the inventorship once the

inventorship has been established under § 1.41 must

include:

(1) An application data sheet in accordance

with § 1.76 that identiﬁes each inventor by his or

her legal name; and

(2) The processing fee set forth in § 1.17(i)

(b) Inventor’s oath or declaration for added

inventor: An oath or declaration as required by §

1.63, or a substitute statement in compliance with

§ 1.64, will be required for any actual inventor who

has not yet executed such an oath or declaration.

inventorship under paragraph (a) of this section ﬁled

after the Ofﬁce action on the merits has been given

or mailed in the application must also be

accompanied by the fee set forth in § 1.17(d), unless

the request is accompanied by a statement that the

request to correct or change the inventorship is due

solely to the cancelation of claims in the application.

(d) Provisional application. Once a cover sheet

as prescribed by § 1.51(c)(1) is ﬁled in a provisional

application, any request to correct or change the

inventorship must include:

(1) A request, signed by a party set forth in

§ 1.33(b), to correct the inventorship that identiﬁes

each inventor by his or her legal name; and

(2) The processing fee set forth in § 1.17(q)

(e) Additional information may be required.

The Ofﬁce may require such other information as

may be deemed appropriate under the particular

circumstances surrounding the correction of

inventorship.

(f) Correcting or updating the name of an

inventor: Any request to correct or update the name

January 2018R-67

§ 1.48CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

of the inventor or a joint inventor, or the order of

the names of joint inventors, in a nonprovisional

application must include:

(1) An application data sheet in accordance

with § 1.76 that identiﬁes each inventor by his or

her legal name in the desired order; and

(2) The processing fee set forth in § 1.17(i).

(g) Reissue applications not covered. The

provisions of this section do not apply to reissue

applications. See §§ 1.171 and 1.175 for correction

of inventorship in a patent via a reissue application.

(h) Correction of inventorship in patent. See §

1.324 for correction of inventorship in a patent.

(i) Correction of inventorship in an interference

or contested case before the Patent Trial and Appeal

Board. In an interference under part 41, subpart

D, of this title, a request for correction of

inventorship in an application must be in the form

of a motion under § 41.121(a)(2) of this title. In a

contested case under part 42, subpart D, of this title,

a request for correction of inventorship in an

application must be in the form of a motion under

§ 42.22 of this title. The motion under § 41.121(a)(2)

or 42.22 of this title must comply with the

requirements of paragraph (a) of this section.

[48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11,

1985; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985;

para. (a), 57 FR 56446, Nov. 30, 1992, effective Jan. 4,

1993; revised, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; para. (f)(1) revised, 67 FR

520, Jan. 4, 2002, effective Apr. 1, 2002; paras. (a)-(c)

and (i) revised and para. (j) added, 69 FR 49959, Aug.

12, 2004, effective Sept. 13, 2004; revised, 77 FR 48776,

Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised,

78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013]

THE APPLICATION

§ 1.51 General requisites of an application.

(a) Applications for patents must be made to the

Director of the United States Patent and Trademark

Ofﬁce. An application transmittal letter limited to

the transmittal of the documents and fees comprising

a patent application under this section may be signed

by a juristic applicant or patent owner.

(b) A complete application ﬁled under § 1.53(b)

or § 1.53(d) comprises:

(1) A speciﬁcation as prescribed by 35

U.S.C. 112, including a claim or claims, see §§ 1.71

to 1.77;

(2) The inventor’s oath or declaration, see

§§ 1.63 and 1.64 ;

(3) Drawings, when necessary, see §§ 1.81

to 1.85; and

(4) The prescribed ﬁling fee, search fee,

examination fee, and application size fee, see § 1.16.

under § 1.53(c) comprises:

(1) A cover sheet identifying:

(i) The application as a provisional

application,

(ii) The name or names of the inventor

or inventors, (see § 1.41(a)(2)),

(iii) The residence of each named

inventor,

(iv) The title of the invention,

(v) The name and registration number of

the attorney or agent (if applicable),

(vi) The docket number used by the

person ﬁling the application to identify the

application (if applicable),

(vii) The correspondence address, and

(viii) The name of the U.S. Government

agency and Government contract number (if the

invention was made by an agency of the U.S.

Government or under a contract with an agency of

the U.S. Government);

(2) A speciﬁcation as prescribed by 35

U.S.C. 112(a), see § 1.71;

(3) Drawings, when necessary, see §§ 1.81

to 1.85; and

(4) The prescribed ﬁling fee and application

size fee, see § 1.16.

(d) Applicants are encouraged to ﬁle an

information disclosure statement in nonprovisional

applications. See § 1.97 and § 1.98. No information

disclosure statement may be ﬁled in a provisional

application.

R-68January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.51

[42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47

FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; paras.

(a) and (b), 48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983; para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar.

16, 1992; paras. (a) & (b) revised, 60 FR 20195, Apr. 25,

1995, effective June 8, 1995; revised, 62 FR 53132, Oct.

10, 1997, effective Dec. 1, 1997; para. (b) revised, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a)

revised, 68 FR 14332, Mar. 25, 2003, effective May 1,

2003; paras. (b)(4) and (c)(4) revised, 70 FR 3880, Jan.

27, 2005, effective Dec. 8, 2004; para. (c)(2) revised, 77

FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para.

(b)(2) revised, 77 FR 48776, Aug. 14, 2012, effective

Sept. 16, 2012; para. (a) revised, 78 FR 62368, Oct. 21,

2013, effective Dec. 18, 2013]

§ 1.52 Language, paper, writing, margins,

compact disc speciﬁcations.

(a) Papers that are to become a part of the

permanent United States Patent and Trademark

Ofﬁce records in the ﬁle of a patent application, or

a reexamination or supplemental examination

proceeding.

(1) All papers, other than drawings, that are

submitted on paper or by facsimile transmission,

and are to become a part of the permanent United

States Patent and Trademark Ofﬁce records in the

ﬁle of a patent application or reexamination or

supplemental examination proceeding, must be on

sheets of paper that are the same size, not

permanently bound together, and:

(i) Flexible, strong, smooth, non-shiny,

durable, and white;

(ii) Either 21.0 cm by 29.7 cm (DIN size

A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches),

with each sheet including a top margin of at least

2.0 cm (3/4 inch), a left side margin of at least 2.5

cm (1 inch), a right side margin of at least 2.0 cm

(3/4 inch), and a bottom margin of at least 2.0 cm

(3/4 inch);

(iii) Written on only one side in portrait

orientation;

(iv) Plainly and legibly written either by

a typewriter or machine printer in permanent dark

ink or its equivalent; and

(v) Presented in a form having sufﬁcient

clarity and contrast between the paper and the

writing thereon to permit the direct reproduction of

readily legible copies in any number by use of

photographic, electrostatic, photo-offset, and

microﬁlming processes and electronic capture by

use of digital imaging and optical character

recognition.

(2) All papers that are submitted on paper

or by facsimile transmission and are to become a

part of the permanent records of the United States

Patent and Trademark Ofﬁce should have no holes

in the sheets as submitted.

(3) The provisions of this paragraph and

paragraph (b) of this section do not apply to the

pre-printed information on paper forms provided by

the Ofﬁce, or to the copy of the patent submitted on

paper in double column format as the speciﬁcation

in a reissue application or request for reexamination.

(4) See § 1.58 for chemical and

mathematical formulae and tables, and § 1.84 for

drawings.

(5) Papers that are submitted electronically

to the Ofﬁce must be formatted and transmitted in

compliance with the Ofﬁce’s electronic ﬁling system

requirements.

(b) The application (speciﬁcation, including

the claims, drawings, and the inventor’s oath or

declaration) or reexamination or supplemental

examination proceeding, any amendments to the

application or reexamination proceeding, or any

corrections to the application, or reexamination or

supplemental examination proceeding.

(1) The application or proceeding and any

amendments or corrections to the application

(including any translation submitted pursuant to

paragraph (d) of this section) or proceeding, except

as provided for in § 1.69 and paragraph (d) of this

section, must:

(i) Comply with the requirements of

paragraph (a) of this section; and

(ii) Be in the English language or be

accompanied by a translation of the application and

a translation of any corrections or amendments into

the English language together with a statement that

the translation is accurate.

(2) The speciﬁcation (including the abstract

and claims) for other than reissue applications and

reexamination or supplemental examination

proceedings, and any amendments for applications

(including reissue applications) and reexamination

January 2018R-69

§ 1.52CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

proceedings to the speciﬁcation, except as provided

for in §§ 1.821 through 1.825, must have:

(i) Lines that are 1 1/2 or double spaced;

(ii) Text written in a nonscript type font

(e.g., Arial, Times Roman, or Courier, preferably a

font size of 12) lettering style having capital letters

which should be at least 0.3175 cm. (0.125 inch)

high, but may be no smaller than 0.21 cm. (0.08

inch) high (e.g., a font size of 6); and

(iii) Only a single column of text.

(3) The claim or claims must commence on

a separate physical sheet or electronic page (§

1.75(h)).

(4) The abstract must commence on a

separate physical sheet or electronic page or be

submitted as the ﬁrst page of the patent in a reissue

application or reexamination or supplemental

examination proceeding (§ 1.72(b)).

(5) Other than in a reissue application or a

reexamination or supplemental examination

proceeding, the pages of the speciﬁcation including

claims and abstract must be numbered consecutively,

starting with 1, the numbers being centrally located

above or preferably, below, the text.

(6) Other than in a reissue application or

reexamination or supplemental examination

proceeding, the paragraphs of the speciﬁcation, other

than in the claims or abstract, may be numbered at

the time the application is ﬁled, and should be

individually and consecutively numbered using

Arabic numerals, so as to unambiguously identify

each paragraph. The number should consist of at

least four numerals enclosed in square brackets,

including leading zeros (e.g., [0001]). The numbers

and enclosing brackets should appear to the right of

the left margin as the ﬁrst item in each paragraph,

before the ﬁrst word of the paragraph, and should

be highlighted in bold. A gap, equivalent to

approximately four spaces, should follow the

number. Nontext elements (e.g., tables,

mathematical or chemical formulae, chemical

structures, and sequence data) are considered part

of the numbered paragraph around or above the

elements, and should not be independently

numbered. If a nontext element extends to the left

margin, it should not be numbered as a separate and

independent paragraph. A list is also treated as part

of the paragraph around or above the list, and should

not be independently numbered. Paragraph or

section headers (titles), whether abutting the left

margin or centered on the page, are not considered

paragraphs and should not be numbered.

alteration of the application papers may be made

before or after the signing of the inventor’s oath or

declaration referring to those application papers,

provided that the statements in the inventor’s oath

or declaration pursuant to § 1.63 remain applicable

to those application papers. A substitute

speciﬁcation (§ 1.125) may be required if the

application papers do not comply with paragraphs

(a) and (b) of this section.

(d) A nonprovisional or provisional application

under 35 U.S.C. 111 may be in a language other

than English.

(1) Nonprovisional application. If a

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

is ﬁled in a language other than English, an English

language translation of the non-English language

application, a statement that the translation is

accurate, and the processing fee set forth in § 1.17(i)

are required. If these items are not ﬁled with the

application, the applicant will be notiﬁed and given

a period of time within which they must be ﬁled in

order to avoid abandonment.

(2) Provisional application. If a provisional

application under 35 U.S.C. 111(b) is ﬁled in a

language other than English, an English language

translation of the non-English language provisional

application will not be required in the provisional

application. See § 1.78(a) for the requirements for

claiming the beneﬁt of such provisional application

in a nonprovisional application.

(e) Electronic documents that are to become

part of the permanent United States Patent and

Trademark Ofﬁce records in the ﬁle of a patent

application, or reexamination or supplemental

examination proceeding.

(1) The following documents may be

submitted to the Ofﬁce on a compact disc in

compliance with this paragraph:

(i) A computer program listing (see §

1.96);

(ii) A “Sequence Listing” (submitted

under § 1.821(c)); or

R-70January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.52

(iii) Any individual table (see § 1.58) if

the table is more than 50 pages in length, or if the

total number of pages of all the tables in an

application exceeds 100 pages in length, where a

table page is a page printed on paper in conformance

with paragraph (b) of this section and § 1.58(c).

(2) A compact disc as used in this part means

a Compact Disc-Read Only Memory (CD-ROM)

or a Compact Disc-Recordable (CD-R) in

compliance with this paragraph. A CD-ROM is a

“read-only” medium on which the data is pressed

into the disc so that it cannot be changed or erased.

A CD-R is a “write once” medium on which once

the data is recorded, it is permanent and cannot be

changed or erased.

(3)(i) Each compact disc must conform

to the International Organization for Standardization

(ISO) 9660 standard, and the contents of each

compact disc must be in compliance with the

American Standard Code for Information

Interchange (ASCII).

(ii) Each compact disc must be enclosed

in a hard compact disc case within an unsealed

padded and protective mailing envelope and

accompanied by a transmittal letter on paper in

accordance with paragraph (a) of this section. The

transmittal letter must list for each compact disc the

machine format (e.g., IBM-PC, Macintosh), the

operating system compatibility (e.g., MS-DOS,

MS-Windows, Macintosh, Unix), a list of ﬁles

contained on the compact disc including their names,

sizes in bytes, and dates of creation, plus any other

special information that is necessary to identify,

maintain, and interpret (e.g., tables in landscape

orientation should be identiﬁed as landscape

orientation or be identiﬁed when inquired about)

the information on the compact disc. Compact discs

submitted to the Ofﬁce will not be returned to the

applicant.

(4) Any compact disc must be submitted in

duplicate unless it contains only the “Sequence

Listing” in computer readable form required by §

1.821(e). The compact disc and duplicate copy must

be labeled “Copy 1” and “Copy 2,” respectively.

The transmittal letter which accompanies the

compact disc must include a statement that the two

compact discs are identical. In the event that the two

compact discs are not identical, the Ofﬁce will use

the compact disc labeled “Copy 1” for further

processing. Any amendment to the information on

a compact disc must be by way of a replacement

compact disc in compliance with this paragraph

containing the substitute information, and must be

accompanied by a statement that the replacement

compact disc contains no new matter. The compact

disc and copy must be labeled “COPY 1

REPLACEMENT MM/DD/YYYY” (with the

month, day and year of creation indicated), and

“COPY 2 REPLACEMENT MM/DD/YYYY,”

respectively.

(5) The speciﬁcation must contain an

incorporation-by-reference of the material on the

compact disc in a separate paragraph (§ 1.77(b)(5)),

identifying each compact disc by the names of the

ﬁles contained on each of the compact discs, their

date of creation and their sizes in bytes. The Ofﬁce

may require applicant to amend the speciﬁcation to

include in the paper portion any part of the

speciﬁcation previously submitted on compact disc.

(6) A compact disc must also be labeled with

the following information:

(i) The name of each inventor (if known);

(ii) Title of the invention;

(iii) The docket number, or application

number if known, used by the person ﬁling the

application to identify the application;

(iv) A creation date of the compact disc;

(v) If multiple compact discs are

submitted, the label shall indicate their order (e.g.,

“1 of X”); and

(vi) An indication that the disc is “Copy

1” or “Copy 2” of the submission. See paragraph

(b)(4) of this section.

(7) If a ﬁle is unreadable on both copies of

the disc, the unreadable ﬁle will be treated as not

having been submitted. A ﬁle is unreadable if, for

example, it is of a format that does not comply with

the requirements of paragraph (e)(3) of this section,

it is corrupted by a computer virus, or it is written

onto a defective compact disc.

(f)(1) Any sequence listing in an electronic

medium in compliance with §§ 1.52(e) and 1.821(c)

or (e), and any computer program listing ﬁled in an

electronic medium in compliance with §§ 1.52(e)

and 1.96, will be excluded when determining the

application size fee required by § 1.16(s) or §

January 2018R-71

§ 1.52CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1.492(j). For purposes of determining the application

size fee required by § 1.16(s) or § 1.492(j), for an

application the speciﬁcation and drawings of which,

excluding any sequence listing in compliance with

§ 1.821(c) or (e), and any computer program listing

ﬁled in an electronic medium in compliance with

§§ 1.52(e) and 1.96, are submitted in whole or in

part on an electronic medium other than the Ofﬁce

electronic ﬁling system, each three kilobytes of

content submitted on an electronic medium shall be

counted as a sheet of paper.

(2) Except as otherwise provided in this

paragraph, the paper size equivalent of the

speciﬁcation and drawings of an application

submitted via the Ofﬁce electronic ﬁling system

will be considered to be seventy-ﬁve percent of the

number of sheets of paper present in the

speciﬁcation and drawings of the application when

entered into the Ofﬁce ﬁle wrapper after being

rendered by the Ofﬁce electronic ﬁling system for

purposes of determining the application size fee

required by § 1.16(s). Any sequence listing in

compliance with § 1.821(c) or (e), and any computer

program listing in compliance with § 1.96, submitted

via the Ofﬁce electronic ﬁling system will be

excluded when determining the application size fee

required by § 1.16(s) if the listing is submitted in

ASCII text as part of an associated ﬁle.

[43 FR 20462, May 11, 1978; paras. (a) and (d),

47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para.

(c), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983;

para. (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984;

para. (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16,

1992; paras. (a) and (b) amended, 61 FR 42790, Aug. 19,

1996, effective Sept. 23, 1996; paras. (a), (c) & (d)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; para. (e) added, 65 FR 54604, Sept. 8, 2000,

effective Sept. 8, 2000 (effective date corrected, 65 FR

78958, Dec. 18, 2000); paras. (a), (b), and (c) revised, 65

FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para.

(d) revised, 65 FR 57024, Sept. 20, 2000, effective Nov.

29, 2000; paras. (a) and (b) revised, 68 FR 38611, June

30, 2003, effective July 30, 2003; section heading and

paras. (b)(2)(ii), (e)(1)(iii) and (e)(3)(i)-(ii) revised, 69

FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; section

heading revised and para. (f) added; 70 FR 3880, Jan. 27,

2005, effective Dec. 8, 2004; para. (f) revised, 70 FR

30360, May 26, 2005, effective July 1, 2005; para. (e)(5)

revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14,

2005; paras. (a)(5), (a)(7), and (b)(7) removed and para.

(a)(6) redesignated as (a)(5), 70 FR 56119, Sept. 26,

2005, effective Nov. 25, 2005; para. (d)(2) revised, 72

FR 46716, Aug. 21, 2007 (implementation enjoined and

never became effective); para. (d)(2) revised, 74 FR

52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove

changes made by the ﬁnal rules in 72 FR 46716 from the

CFR); para. (b) heading and paras. (c) and (d) revised,

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012;

paras. (a), (b), and (e) revised, 78 FR 62368, Oct. 21,

2013, effective Dec. 18, 2013]

§ 1.53 Application number, ﬁling date, and

completion of application.

[Editor Note: Applicable to patent applications

ﬁled under 35 U.S.C. 111 on or after December 18, 2013.]

(a) Application number. Any papers received

in the Patent and Trademark Ofﬁce which purport

to be an application for a patent will be assigned an

application number for identiﬁcation purposes.

(b) Application ﬁling requirements—

Nonprovisional application. The ﬁling date of an

application for patent ﬁled under this section, other

than an application for a design patent or a

provisional application under paragraph (c) of this

section, is the date on which a speciﬁcation, with

or without claims, is received in the Ofﬁce. The

ﬁling date of an application for a design patent ﬁled

under this section, except for a continued

prosecution application under paragraph (d) of this

section, is the date on which the speciﬁcation as

prescribed by 35 U.S.C. 112, including at least one

claim, and any required drawings are received in

the Ofﬁce. No new matter may be introduced into

an application after its ﬁling date. A continuing

application, which may be a continuation, divisional,

or continuation-in-part application, may be ﬁled

under the conditions speciﬁed in 35 U.S.C. 120,

121, 365(c), or 386(c) and § 1.78.

(1) A continuation or divisional application

that names as inventors the same or fewer than all

of the inventors named in the prior application may

be ﬁled under this paragraph or paragraph (d) of

this section.

(2) A continuation-in-part application (which

may disclose and claim subject matter not disclosed

in the prior application) or a continuation or

divisional application naming an inventor not named

in the prior application must be ﬁled under this

paragraph.

Provisional application. The ﬁling date of a

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.53

provisional application is the date on which a

speciﬁcation, with or without claims, is received in

the Ofﬁce. No amendment, other than to make the

provisional application comply with the patent

statute and all applicable regulations, may be made

to the provisional application after the ﬁling date of

the provisional application.

(1) A provisional application must also

include the cover sheet required by § 1.51(c)(1),

which may be an application data sheet (§ 1.76), or

a cover letter identifying the application as a

provisional application. Otherwise, the application

will be treated as an application ﬁled under

paragraph (b) of this section.

(2) An application for patent ﬁled under

paragraph (b) of this section may be converted to a

provisional application and be accorded the original

ﬁling date of the application ﬁled under paragraph

(b) of this section. The grant of such a request for

conversion will not entitle applicant to a refund of

the fees that were properly paid in the application

ﬁled under paragraph (b) of this section. Such a

request for conversion must be accompanied by the

processing fee set forth in § 1.17(q) and be ﬁled

prior to the earliest of:

(i) Abandonment of the application ﬁled

under paragraph (b) of this section;

(ii) Payment of the issue fee on the

application ﬁled under paragraph (b) of this section;

(iii) Expiration of twelve months after

the ﬁling date of the application ﬁled under

paragraph (b) of this section.

(3) A provisional application ﬁled under

paragraph (c) of this section may be converted to a

nonprovisional application ﬁled under paragraph

(b) of this section and accorded the original ﬁling

date of the provisional application. The conversion

of a provisional application to a nonprovisional

application will not result in either the refund of any

fee properly paid in the provisional application or

the application of any such fee to the ﬁling fee, or

any other fee, for the nonprovisional application.

Conversion of a provisional application to a

nonprovisional application under this paragraph will

result in the term of any patent to issue from the

application being measured from at least the ﬁling

date of the provisional application for which

conversion is requested. Thus, applicants should

consider avoiding this adverse patent term impact

by ﬁling a nonprovisional application claiming the

beneﬁt of the provisional application under 35

U.S.C. 119(e), rather than converting the provisional

application into a nonprovisional application

pursuant to this paragraph. A request to convert a

provisional application to a nonprovisional

application must be accompanied by the fee set forth

in § 1.17(i) and an amendment including at least

one claim as prescribed by 35 U.S.C. 112(b), unless

the provisional application under paragraph (c) of

this section otherwise contains at least one claim as

prescribed by 35 U.S.C. 112(b). The nonprovisional

application resulting from conversion of a

provisional application must also include the ﬁling

fee, search fee, and examination fee for a

nonprovisional application, and the surcharge

required by § 1.16(f) if either the basic ﬁling fee for

a nonprovisional application or the inventor’s oath

or declaration was not present on the ﬁling date

accorded the resulting nonprovisional application

(i.e., the ﬁling date of the original provisional

application). A request to convert a provisional

application to a nonprovisional application must

also be ﬁled prior to the earliest of:

(i) Abandonment of the provisional

application ﬁled under paragraph (c) of this section;

(ii) Expiration of twelve months after the

ﬁling date of the provisional application ﬁled under

paragraph (c) of this section.

(4) A provisional application is not entitled

to the right of priority under 35 U.S.C. 119, 365(a),

or 386(a) or § 1.55, or to the beneﬁt of an earlier

ﬁling date under 35 U.S.C. 120, 121, 365(c), or

386(c) or § 1.78 of any other application. No claim

for priority under 35 U.S.C. 119(e) or § 1.78(a) may

be made in a design application based on a

provisional application. The requirements of §§

1.821 through 1.825 regarding application

disclosures containing nucleotide and/or amino acid

sequences are not mandatory for provisional

applications.

(d) Application ﬁling requirements —

Continued prosecution (nonprovisional) application.

(1) A continuation or divisional application

(but not a continuation-in-part) of a prior

nonprovisional application may be ﬁled as a

January 2018R-73

§ 1.53CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

continued prosecution application under this

paragraph, provided that:

(i) The application is for a design patent;

(ii) The prior nonprovisional application

is a design application, but not an international

design application, that is complete as deﬁned by §

1.51(b), except for the inventor’s oath or declaration

if the application is ﬁled on or after September 16,

2012, and the prior nonprovisional application

contains an application data sheet meeting the

conditions speciﬁed in § 1.53(f)(3)(i); and

(iii) The application under this paragraph

is ﬁled before the earliest of:

(A) Payment of the issue fee on the

prior application, unless a petition under § 1.313(c)

is granted in the prior application;

(B) Abandonment of the prior

application; or

the prior application.

(2) The ﬁling date of a continued prosecution

application is the date on which a request on a

separate paper for an application under this

paragraph is ﬁled. An application ﬁled under this

paragraph:

(i) Must identify the prior application;

(ii) Discloses and claims only subject

matter disclosed in the prior application;

(iii) Names as inventors the same

inventors named in the prior application on the date

the application under this paragraph was ﬁled,

except as provided in paragraph (d)(4) of this

section;

(iv) Includes the request for an

application under this paragraph, will utilize the ﬁle

jacket and contents of the prior application,

including the speciﬁcation, drawings and the

inventor’s oath or declaration from the prior

application, to constitute the new application, and

will be assigned the application number of the prior

application for identiﬁcation purposes; and

(v) Is a request to expressly abandon the

prior application as of the ﬁling date of the request

for an application under this paragraph.

(3) The ﬁling fee, search fee, and

examination fee for a continued prosecution

application ﬁled under this paragraph are the basic

ﬁling fee as set forth in § 1.16(b), the search fee as

set forth in § 1.16(l), and the examination fee as set

forth in § 1.16(p).

(4) An application ﬁled under this paragraph

may be ﬁled by fewer than all the inventors named

in the prior application, provided that the request

for an application under this paragraph when ﬁled

is accompanied by a statement requesting deletion

of the name or names of the person or persons who

are not inventors of the invention being claimed in

the new application. No person may be named as

an inventor in an application ﬁled under this

paragraph who was not named as an inventor in the

prior application on the date the application under

this paragraph was ﬁled, except by way of correction

of inventorship under § 1.48.

(5) Any new change must be made in the

form of an amendment to the prior application as it

existed prior to the ﬁling of an application under

this paragraph. No amendment in an application

under this paragraph (a continued prosecution

application) may introduce new matter or matter

that would have been new matter in the prior

application. Any new speciﬁcation ﬁled with the

request for an application under this paragraph will

not be considered part of the original application

papers, but will be treated as a substitute

speciﬁcation in accordance with § 1.125.

(6) The ﬁling of a continued prosecution

application under this paragraph will be construed

to include a waiver of conﬁdentiality by the

applicant under 35 U.S.C. 122 to the extent that any

member of the public, who is entitled under the

provisions of § 1.14 to access to, copies of, or

information concerning either the prior application

or any continuing application ﬁled under the

provisions of this paragraph, may be given similar

access to, copies of, or similar information

concerning the other application or applications in

the ﬁle jacket.

(7) A request for an application under this

paragraph is the speciﬁc reference required by 35

U.S.C. 120 to every application assigned the

application number identiﬁed in such request. No

amendment in an application under this paragraph

may delete this speciﬁc reference to any prior

application.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.53

(8) In addition to identifying the application

number of the prior application, applicant should

furnish in the request for an application under this

paragraph the following information relating to the

prior application to the best of his or her ability:

(i) Title of invention;

(ii) Name of applicant(s); and

(iii) Correspondence address.

(9) See § 1.103(b) for requesting a limited

suspension of action in an application ﬁled under

this paragraph.

(e) Failure to meet ﬁling date requirements.

(1) If an application deposited under

paragraph (b), (c), or (d) of this section does not

meet the requirements of such paragraph to be

entitled to a ﬁling date, applicant will be so notiﬁed,

if a correspondence address has been provided, and

given a period of time within which to correct the

ﬁling error. If, however, a request for an application

under paragraph (d) of this section does not meet

the requirements of that paragraph because the

application in which the request was ﬁled is not a

design application, and if the application in which

the request was ﬁled was itself ﬁled on or after June

8, 1995, the request for an application under

paragraph (d) of this section will be treated as a

request for continued examination under § 1.114.

(2) Any request for review of a notiﬁcation

pursuant to paragraph (e)(1) of this section, or a

notiﬁcation that the original application papers lack

a portion of the speciﬁcation or drawing(s), must

be by way of a petition pursuant to this paragraph

accompanied by the fee set forth in § 1.17(f). In the

absence of a timely (§ 1.181(f)) petition pursuant

to this paragraph, the ﬁling date of an application

in which the applicant was notiﬁed of a ﬁling error

pursuant to paragraph (e)(1) of this section will be

the date the ﬁling error is corrected.

(3) If an applicant is notiﬁed of a ﬁling error

pursuant to paragraph (e)(1) of this section, but fails

to correct the ﬁling error within the given time

period or otherwise timely (§ 1.181(f)) take action

pursuant to this paragraph, proceedings in the

application will be considered terminated. Where

proceedings in an application are terminated

pursuant to this paragraph, the application may be

disposed of, and any ﬁling fees, less the handling

fee set forth in § 1.21(n), will be refunded.

(f) Completion of application subsequent to

ﬁling — Nonprovisional (including continued

prosecution or reissue) application.

(1) If an application which has been

accorded a ﬁling date pursuant to paragraph (b) or

(d) of this section does not include the basic ﬁling

fee, search fee, or examination fee, or if an

application which has been accorded a ﬁling date

pursuant to paragraph (b) of this section does not

include at least one claim or the inventor’s oath or

declaration (§§ 1.63, 1.64, 1.162 or 1.175), and the

applicant has provided a correspondence address (§

1.33(a) ), the applicant will be notiﬁed and given a

period of time within which to ﬁle a claim or claims,

pay the basic ﬁling fee, search fee, and examination

fee, and pay the surcharge if required by § 1.16(f),

to avoid abandonment.

(2) If an application which has been

accorded a ﬁling date pursuant to paragraph (b) of

this section does not include the basic ﬁling fee,

search fee, examination fee, at least one claim, or

the inventor’s oath or declaration, and the applicant

has not provided a correspondence address (§

1.33(a) ), the applicant has three months from the

ﬁling date of the application within which to ﬁle a

claim or claims, pay the basic ﬁling fee, search fee,

and examination fee, and pay the surcharge required

by § 1.16(f), to avoid abandonment.

(3) The inventor’s oath or declaration in an

application under § 1.53(b) must also be ﬁled within

the period speciﬁed in paragraph (f)(1) or (f)(2) of

this section, except that the ﬁling of the inventor’s

oath or declaration may be postponed until the

application is otherwise in condition for allowance

under the conditions speciﬁed in paragraphs (f)(3)(i)

and (f)(3)(ii) of this section.

(i) The application must be an original

(non-reissue) application that contains an application

data sheet in accordance with § 1.76 identifying:

(A) Each inventor by his or her legal

name;

(B) A mailing address where the

inventor customarily receives mail, and residence,

if an inventor lives at a location which is different

from where the inventor customarily receives mail,

for each inventor.

(ii) The applicant must ﬁle each required

oath or declaration in compliance with § 1.63, or

January 2018R-75

§ 1.53CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

substitute statement in compliance with § 1.64, no

later than the date on which the issue fee for the

patent is paid. If the applicant is notiﬁed in a notice

of allowability that an oath or declaration in

compliance with § 1.63, or substitute statement in

compliance with § 1.64, executed by or with respect

to each named inventor has not been ﬁled, the

applicant must ﬁle each required oath or declaration

in compliance with § 1.63, or substitute statement

in compliance with § 1.64, no later than the date on

which the issue fee is paid to avoid abandonment.

This time period is not extendable under § 1.136

(see § 1.136(c)). The Ofﬁce may dispense with the

notice provided for in paragraph (f)(1) of this section

if each required oath or declaration in compliance

with § 1.63, or substitute statement in compliance

with § 1.64, has been ﬁled before the application is

in condition for allowance.

(4) If the excess claims fees required by §

1.16(h) and (i) and multiple dependent claim fee

required by § 1.16(j) are not paid on ﬁling or on

later presentation of the claims for which the excess

claims or multiple dependent claim fees are due, the

fees required by § 1.16(h), (i), and (j) must be paid

or the claims canceled by amendment prior to the

expiration of the time period set for reply by the

Ofﬁce in any notice of fee deﬁciency. If the

application size fee required by § 1.16(s) (if any) is

not paid on ﬁling or on later presentation of the

amendment necessitating a fee or additional fee

under § 1.16(s), the fee required by § 1.16(s) must

be paid prior to the expiration of the time period set

for reply by the Ofﬁce in any notice of fee

deﬁciency in order to avoid abandonment.

(5) This paragraph applies to continuation

or divisional applications under paragraphs (b) or

(d) of this section and to continuation-in-part

applications under paragraph (b) of this section. See

§ 1.63(d) concerning the submission of a copy of

the inventor’s oath or declaration from the prior

application for a continuing application under

paragraph (b) of this section.

(6) If applicant does not pay the basic ﬁling

fee during the pendency of the application, the

Ofﬁce may dispose of the application.

(g) Completion of application subsequent to

ﬁling — Provisional application.

(1) If a provisional application which has

been accorded a ﬁling date pursuant to paragraph

required by § 1.51(c)(1) or the basic ﬁling fee (§

1.16(d)), and applicant has provided a

correspondence address (§ 1.33(a)), applicant will

be notiﬁed and given a period of time within which

to pay the basic ﬁling fee, ﬁle a cover sheet (§

1.51(c)(1)), and pay the surcharge required by §

1.16(g) to avoid abandonment.

(2) If a provisional application which has

been accorded a ﬁling date pursuant to paragraph

required by § 1.51(c)(1) or the basic ﬁling fee (§

1.16(d)), and applicant has not provided a

correspondence address (§ 1.33(a)), applicant has

two months from the ﬁling date of the application

within which to pay the basic ﬁling fee, ﬁle a cover

sheet (§ 1.51(c)(1)), and pay the surcharge required

by § 1.16(g) to avoid abandonment.

(3) If the application size fee required by §

1.16(s) (if any) is not paid on ﬁling, the fee required

by § 1.16(s) must be paid prior to the expiration of

the time period set for reply by the Ofﬁce in any

notice of fee deﬁciency in order to avoid

abandonment.

(4) If applicant does not pay the basic ﬁling

fee during the pendency of the application, the

Ofﬁce may dispose of the application.

(h) Subsequent treatment of application —

Nonprovisional (including continued prosecution)

application. An application for a patent ﬁled under

paragraphs (b) or (d) of this section will not be

placed on the ﬁles for examination until all its

required parts, complying with the rules relating

thereto, are received, except that the inventor’s oath

or declaration may be ﬁled when the application is

otherwise in condition for allowance pursuant to

paragraph (f)(3) of this section and minor

informalities may be waived subject to subsequent

correction whenever required.

(i) Subsequent treatment of application -

Provisional application. A provisional application

for a patent ﬁled under paragraph (c) of this section

will not be placed on the ﬁles for examination and

will become abandoned no later than twelve months

after its ﬁling date pursuant to 35 U.S.C. 111(b)(1).

[48 FR 2709, Jan. 20, 1983, effective Feb. 27,

1983; paras. (b) and (d), 49 FR 554, Jan. 4, 1984,

effective Apr. 1, 1984; para. (c), 50 FR 31826, Aug. 6,

1985, effective Oct. 5, 1985; paras. (c) and (d), 53 FR

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.53

47808, Nov. 28, 1988, effective Jan. 1, 1989; paras. (b)

and (c), 54 FR 47518, Nov. 15, 1989, effective Jan. 16,

1990; paras. (a)-(e) revised, 60 FR 20195, Apr. 25, 1995,

effective June 8, 1995; revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; para. (d) revised, 63 FR

5734, Feb. 4, 1998, effective Feb. 4, 1998 (adopted as

ﬁnal, 63 FR 36184, Jul. 2, 1998); paras. (c)(3), (c)(4) and

(d) revised, 65 FR 14865, Mar. 20, 2000, effective May

29, 2000 (paras. (c)(4) and (d) adopted as ﬁnal, 65 FR

50092, Aug. 16, 2000); para. (c)(3) revised, 65 FR 50092,

Aug. 16, 2000, effective Aug. 16, 2000; paras. (c)(1),

(c)(2), (d)(4), (e)(2), (f), and (g) revised and para. (d)(10)

added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,

2000; para. (c)(4) revised, 65 FR 78958, Dec. 18, 2000;

para. (d)(9) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; paras. (d)(1), (d)(3) and (e)(1)

revised, 68 FR 32376, May 30, 2003, effective July 14,

2003; para. (d)(9) deleted and para. (d)(10) redesignated

as para. (d)(9), 69 FR 29865, May 26, 2004, effective

June 25, 2004; para. (e)(2) revised, 69 FR 56481, Sept.

21, 2004, effective Nov. 22, 2004; paras (c)(3), (f) and

(g) revised, 70 FR 3880, Jan. 27, 2005, effective Dec.,

8, 2004; paras. (d)(3) and (f)(5) revised, 70 FR 30360,

May 26, 2005, effective July 1, 2005; paras. (b) and (c)(4)

revised, 72 FR 46716, Aug. 21, 2007 (implementation

enjoined and never became effective); paras. (b) and

(c)(4) revised, 74 FR 52686, Oct. 14, 2009, effective Oct.

14, 2009 (to remove changes made by the ﬁnal rules in

72 FR 46716 from the CFR); introductory text of paras.

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012;

para.(b) introductory text, paras. (c)(2)(ii)-(iii) and (c)(4)

revised, and para.(j) removed, 78 FR 11024, Feb. 14,

2013, effective Mar. 16, 2013; paras. (b), (c) and (f)

revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18,

2013; para. (d)(1)(ii) revised, 79 FR 12384, Mar. 5, 2014,

effective Mar. 5, 2014(adopted as ﬁnal, 79 FR 68121,

Nov. 14, 2014); para. (b) introductory text and paras.

(c)(4) and (d)(1)(ii) revised, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

[* Paragraphs (b), (c), (f) and (h) above include

changes having limited applicability as follows:

The changes to paras. (b) and (c) effective Dec.

18, 2013 and May 13, 2015 are applicable only to patent

applications ﬁled on or after Dec. 18, 2013. See § 1.53

(pre-PLT(AIA)) for paras. (b) and (c) otherwise in effect;

and

The changes to para. (f) effective Dec. 18, 2013

and the changes to para. (h) effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.53 (pre-AIA) for paras. (f) and (h) otherwise in effect.

]

§ 1.53 (pre-PLT (AIA)) Application number,

ﬁling date, and completion of application.

[Editor Note: Applicable to patent applications

ﬁled under 35 U.S.C. 111 (pre-PLT (AIA)) before

December 18, 2013. ]

* * * * *

(b) Application ﬁling requirements —

Nonprovisional application. The ﬁling date of an

application for patent ﬁled under this section, except

for a provisional application under paragraph (c) of

this section or a continued prosecution application

under paragraph (d) of this section, is the date on

which a speciﬁcation as prescribed by 35 U.S.C.

112 containing a description pursuant to § 1.71 and

at least one claim pursuant to § 1.75, and any

drawing required by § 1.81(a) are ﬁled in the Patent

and Trademark Ofﬁce. No new matter may be

introduced into an application after its ﬁling date.

A continuing application, which may be a

continuation, divisional, or continuation-in-part

application, may be ﬁled under the conditions

speciﬁed in 35 U.S.C. 120, 121 or 365(c) and §

1.78(c) and (d).

(1) A continuation or divisional application

that names as inventors the same or fewer than all

of the inventors named in the prior application may

be ﬁled under this paragraph or paragraph (d) of

this section.

(2) A continuation-in-part application (which

may disclose and claim subject matter not disclosed

in the prior application) or a continuation or

divisional application naming an inventor not named

in the prior application must be ﬁled under this

paragraph.

Provisional application. The ﬁling date of a

provisional application is the date on which a

speciﬁcation as prescribed by 35 U.S.C. 112(a), and

any drawing required by § 1.81(a) are ﬁled in the

Patent and Trademark Ofﬁce. No amendment, other

than to make the provisional application comply

with the patent statute and all applicable regulations,

may be made to the provisional application after the

ﬁling date of the provisional application.

(1) A provisional application must also

include the cover sheet required by § 1.51(c)(1),

which may be an application data sheet (§ 1.76), or

January 2018R-77

§ 1.53 (pre-PLT

(AIA))

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

a cover letter identifying the application as a

provisional application. Otherwise, the application

will be treated as an application ﬁled under

paragraph (b) of this section.

(2) An application for patent ﬁled under

paragraph (b) of this section may be converted to a

provisional application and be accorded the original

ﬁling date of the application ﬁled under paragraph

(b) of this section. The grant of such a request for

conversion will not entitle applicant to a refund of

the fees that were properly paid in the application

ﬁled under paragraph (b) of this section. Such a

request for conversion must be accompanied by the

processing fee set forth in § 1.17(q) and be ﬁled

prior to the earliest of:

(i) Abandonment of the application ﬁled

under paragraph (b) of this section;

(ii) Payment of the issue fee on the

application ﬁled under paragraph (b) of this section;

(iii) Expiration of twelve months after

the ﬁling date of the application ﬁled under

paragraph (b) of this section.

(3) A provisional application ﬁled under

paragraph (c) of this section may be converted to a

nonprovisional application ﬁled under paragraph

(b) of this section and accorded the original ﬁling

date of the provisional application. The conversion

of a provisional application to a nonprovisional

application will not result in either the refund of any

fee properly paid in the provisional application or

the application of any such fee to the ﬁling fee, or

any other fee, for the nonprovisional application.

Conversion of a provisional application to a

nonprovisional application under this paragraph will

result in the term of any patent to issue from the

application being measured from at least the ﬁling

date of the provisional application for which

conversion is requested. Thus, applicants should

consider avoiding this adverse patent term impact

by ﬁling a nonprovisional application claiming the

beneﬁt of the provisional application under 35

U.S.C. 119(e) (rather than converting the provisional

application into a nonprovisional application

pursuant to this paragraph). A request to convert a

provisional application to a nonprovisional

application must be accompanied by the fee set forth

in § 1.17(i) and an amendment including at least

one claim as prescribed by 35 U.S.C. 112(b), unless

the provisional application under paragraph (c) of

this section otherwise contains at least one claim as

prescribed by 35 U.S.C. 112(b). The nonprovisional

application resulting from conversion of a

provisional application must also include the ﬁling

fee, search fee, and examination fee for a

nonprovisional application, the inventor’s oath or

declaration, and the surcharge required by § 1.16(f)

if either the basic ﬁling fee for a nonprovisional

application or the inventor’s oath or declaration was

not present on the ﬁling date accorded the resulting

nonprovisional application (i.e., the ﬁling date of

the original provisional application). A request to

convert a provisional application to a nonprovisional

application must also be ﬁled prior to the earliest

of:

(i) Abandonment of the provisional

application ﬁled under paragraph (c) of this section;

(ii) Expiration of twelve months after the

ﬁling date of the provisional application ﬁled under

paragraph (c) of this section.

(4) A provisional application is not entitled

to the right of priority under 35 U.S.C. 119 or 365(a)

or § 1.55, or to the beneﬁt of an earlier ﬁling date

under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any

other application. No claim for priority under 35

U.S.C. 119(e) or § 1.78(a) may be made in a design

application based on a provisional application. The

requirements of §§ 1.821 through 1.825 regarding

application disclosures containing nucleotide and/or

amino acid sequences are not mandatory for

provisional applications.

* * * * *

[*See § 1.53 for the current rule, including paras.

(b) and (c) containing changes applicable to patent

applications ﬁled on or after Dec. 18, 2013.]

§ 1.53 (pre-AIA) Application number, ﬁling

date, and completion of application.

[Editor Note: Applicable to patent applications

ﬁled before September 16, 2012* ]

* * * * *

(f) Completion of application subsequent to

ﬁling — Nonprovisional (including continued

prosecution or reissue) application.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.53 (pre-AIA)

(1) If an application which has been

accorded a ﬁling date pursuant to paragraph (b) or

(d) of this section does not include the basic ﬁling

fee, the search fee, or the examination fee, or if an

application which has been accorded a ﬁling date

pursuant to paragraph (b) of this section does not

include an oath or declaration by the applicant

pursuant to §§ 1.63, 1.162 or § 1.175, and applicant

has provided a correspondence address (§ 1.33(a)),

applicant will be notiﬁed and given a period of time

within which to pay the basic ﬁling fee, search fee,

and examination fee, ﬁle an oath or declaration in

an application under paragraph (b) of this section,

and pay the surcharge if required by § 1.16(f) to

avoid abandonment.

(2) If an application which has been

accorded a ﬁling date pursuant to paragraph (b) of

this section does not include the basic ﬁling fee, the

search fee, the examination fee, or an oath or

declaration by the applicant pursuant to §§ 1.63,

1.162 or § 1.175, and applicant has not provided a

correspondence address (§ 1.33(a)), applicant has

two months from the ﬁling date of the application

within which to pay the basic ﬁling fee, search fee,

and examination fee, ﬁle an oath or declaration, and

pay the surcharge required by § 1.16(f) to avoid

abandonment.

(3) If the excess claims fees required by §§

1.16(h) and (i) and multiple dependent claim fee

required by § 1.16(j) are not paid on ﬁling or on

later presentation of the claims for which the excess

claims or multiple dependent claim fees are due, the

fees required by §§ 1.16(h), (i), and (j), must be paid

or the claims canceled by amendment prior to the

expiration of the time period set for reply by the

Ofﬁce in any notice of fee deﬁciency. If the

application size fee required by § 1.16(s) (if any) is

not paid on ﬁling or on later presentation of the

amendment necessitating a fee or additional fee

under § 1.16(s), the fee required by § 1.16(s) must

be paid prior to the expiration of the time period set

for reply by the Ofﬁce in any notice of fee

deﬁciency in order to avoid abandonment.

(4) This paragraph applies to continuation

or divisional applications under paragraphs (b) or

(d) of this section and to continuation-in-part

applications under paragraph (b) of this section. See

§ 1.63(d) concerning the submission of a copy of

the oath or declaration from the prior application

for a continuation or divisional application under

paragraph (b) of this section.

(5) If applicant does not pay the basic ﬁling

fee during the pendency of the application, the

Ofﬁce may dispose of the application.

* * * * *

(h) Subsequent treatment of application —

Nonprovisional (including continued prosecution)

application. An application for a patent ﬁled under

paragraphs (b) or (d) of this section will not be

placed on the ﬁles for examination until all its

required parts, complying with the rules relating

thereto, are received, except that certain minor

informalities may be waived subject to subsequent

correction whenever required.

[*See § 1.53 for the portions of the rule applicable

irrespective of application ﬁling date and for current

paras. (f) and (h)]

§ 1.54 Parts of application to be ﬁled

together; ﬁling receipt.

(a) It is desirable that all parts of the complete

application be deposited in the Ofﬁce together;

otherwise, a letter must accompany each part,

accurately and clearly connecting it with the other

parts of the application. See § 1.53(f) and (g) with

regard to completion of an application.

(b) Applicant will be informed of the application

number and ﬁling date by a ﬁling receipt, unless the

application is an application ﬁled under § 1.53(d).

A letter limited to a request for a ﬁling receipt may

be signed by a juristic applicant or patent owner.

[48 FR 2710, Jan. 20, 1983, effective Feb. 27,

1983; para. (b) amended, 61 FR 42790, Aug. 19, 1996,

effective Sept. 23, 1996; revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; para. (b) revised, 78 FR

62368, Oct. 21, 2013, effective Dec. 18, 2013]

§ 1.55 Claim for foreign priority.

(a) In general. An applicant in a nonprovisional

application may claim priority to one or more prior

foreign applications under the conditions speciﬁed

in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a)

and (b), and 386(a) and (b) and this section.

(b) Time for ﬁling subsequent application. The

nonprovisional application must be:

January 2018R-79

§ 1.55CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) Filed not later than twelve months (six

months in the case of a design application) after the

date on which the foreign application was ﬁled,

subject to paragraph (c) of this section (a subsequent

application); or

(2) Entitled to claim the beneﬁt under 35

U.S.C. 120, 121, 365(c), or 386(c) of a subsequent

application that was ﬁled within the period set forth

in paragraph (b)(1) of this section.

the subsequent application has a ﬁling date which

is after the expiration of the period set forth in

paragraph (b)(1) of this section, but within two

months from the expiration of the period set forth

in paragraph (b)(1) of this section, the right of

priority in the subsequent application may be

restored under PCT Rule 26 bis.3 for an international

application, or upon petition pursuant to this

paragraph, if the delay in ﬁling the subsequent

application within the period set forth in paragraph

(b)(1) of this section was unintentional. A petition

to restore the right of priority under this paragraph

ﬁled on or after May 13, 2015, must be ﬁled in the

subsequent application, or in the earliest

nonprovisional application claiming beneﬁt under

35 U.S.C. 120, 121, 365(c), or 386(c) to the

subsequent application, if such subsequent

application is not a nonprovisional application. Any

petition to restore the right of priority under this

paragraph must include:

(1) The priority claim under 35 U.S.C.

119(a) through (d) or (f), 365(a) or (b), or 386(a) or

(b) in an application data sheet (§ 1.76(b)(6)),

identifying the foreign application to which priority

is claimed, by specifying the application number,

country (or intellectual property authority), day,

month, and year of its ﬁling, unless previously

submitted;

(2) The petition fee as set forth in § 1.17(m);

and

(3) A statement that the delay in ﬁling the

subsequent application within the period set forth

in paragraph (b)(1) of this section was unintentional.

The Director may require additional information

where there is a question whether the delay was

unintentional.

(d) Time for ﬁling priority claim—

(1) Application under 35 U.S.C. 111(a). The

claim for priority must be ﬁled within the later of

four months from the actual ﬁling date of the

application or sixteen months from the ﬁling date

of the prior foreign application in an original

application ﬁled under 35 U.S.C. 111(a), except as

provided in paragraph (e) of this section. The claim

for priority must be presented in an application data

sheet (§ 1.76(b)(6)) and must identify the foreign

application to which priority is claimed by

specifying the application number, country (or

intellectual property authority), day, month, and

year of its ﬁling. The time periods in this paragraph

do not apply if the later-ﬁled application is:

(i) An application for a design patent; or

(ii) An application ﬁled under 35 U.S.C.

111(a) before November 29, 2000.

(2) Application under 35 U.S.C. 371. The

claim for priority must be made within the time limit

set forth in the PCT and the Regulations under the

PCT in an international application entering the

national stage under 35 U.S.C. 371, except as

provided in paragraph (e) of this section.

(e) Delayed priority claim. Unless such claim

is accepted in accordance with the provisions of this

paragraph, any claim for priority under 35 U.S.C.

119(a) through (d) or (f), 365(a) or (b), or 386(a)

or 386(b) not presented in the manner required by

paragraph (d) or (m) of this section during pendency

and within the time period provided by paragraph

(d) of this section (if applicable) is considered to

have been waived. If a claim for priority is

considered to have been waived under this section,

the claim may be accepted if the priority claim was

unintentionally delayed. A petition to accept a

delayed claim for priority under 35 U.S.C. 119(a)

through (d) or (f), 365(a) or (b), or 386(a) or 386(b)

must be accompanied by:

(1) The priority claim under 35 U.S.C.

119(a) through (d) or (f), 365(a) or (b), or 386(a) or

386(b) in an application data sheet (§ 1.76(b)(6)),

identifying the foreign application to which priority

is claimed, by specifying the application number,

country (or intellectual property authority), day,

month, and year of its ﬁling, unless previously

submitted;

(2) A certiﬁed copy of the foreign

application, unless previously submitted or an

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.55

exception in paragraph (h), (i), or (j) of this section

applies;

(3) The petition fee as set forth in § 1.17(m);

and

(4) A statement that the entire delay between

the date the priority claim was due under this section

and the date the priority claim was ﬁled was

unintentional. The Director may require additional

information where there is a question whether the

delay was unintentional.

(f) Time for ﬁling certiﬁed copy of foreign

application—

(1) Application under 35 U.S.C. 111(a). A

certiﬁed copy of the foreign application must be

ﬁled within the later of four months from the actual

ﬁling date of the application, or sixteen months from

the ﬁling date of the prior foreign application, in an

original application under 35 U.S.C. 111(a) ﬁled on

or after March 16, 2013, except as provided in

paragraphs (h), (i), and (j) of this section. The time

period in this paragraph does not apply in a design

application.

(2) Application under 35 U.S.C. 371. A

certiﬁed copy of the foreign application must be

ﬁled within the time limit set forth in the PCT and

the Regulations under the PCT in an international

application entering the national stage under 35

U.S.C. 371. If a certiﬁed copy of the foreign

application is not ﬁled during the international stage

in an international application in which the national

stage commenced on or after December 18, 2013,

a certiﬁed copy of the foreign application must be

ﬁled within the later of four months from the date

on which the national stage commenced under 35

U.S.C. 371(b) or (f) (§ 1.491(a)), four months from

the date of the initial submission under 35 U.S.C.

371 to enter the national stage, or sixteen months

from the ﬁling date of the prior foreign application,

except as provided in paragraphs (h), (i), and (j) of

this section.

(3) If a certiﬁed copy of the foreign

application is not ﬁled within the time period

speciﬁed [in] paragraph (f)(1) of this section in an

application under 35 U.S.C. 111(a) or within the

period speciﬁed in paragraph (f)(2) of this section

in an international application entering the national

stage under 35 U.S.C. 371, and an exception in

paragraph (h), (i), or (j) of this section is not

applicable, the certiﬁed copy of the foreign

application must be accompanied by a petition

including a showing of good and sufﬁcient cause

for the delay and the petition fee set forth in §

1.17(g).

(g) Requirement for ﬁling priority claim,

certiﬁed copy of foreign application, and translation

in any application.

(1) The claim for priority and the certiﬁed

copy of the foreign application speciﬁed in 35

U.S.C. 119(b) or PCT Rule 17 must, in any event,

be ﬁled within the pendency of the application,

unless ﬁled with a petition under paragraph (e) or

(f) of this section, or with a petition accompanied

by the fee set forth in § 1.17(g) which includes a

showing of good and sufﬁcient cause for the delay

in ﬁling the certiﬁed copy of the foreign application

in a design application. If the claim for priority or

the certiﬁed copy of the foreign application is ﬁled

after the date the issue fee is paid, the patent will

not include the priority claim unless corrected by a

certiﬁcate of correction under 35 U.S.C. 255 and §

1.323.

(2) The Ofﬁce may require that the claim

for priority and the certiﬁed copy of the foreign

application be ﬁled earlier than otherwise provided

in this section:

(i) When the application is involved in

an interference (see § 41.202 of this chapter) or

derivation (see part 42 of this chapter) proceeding;

(ii) When necessary to overcome the date

of a reference relied upon by the examiner; or

(iii) When deemed necessary by the

examiner.

(3) An English language translation of a

non-English language foreign application is not

required except:

(i) When the application is involved in

an interference (see § 41.202 of this chapter) or

derivation (see part 42 of this chapter) proceeding;

(ii) When necessary to overcome the date

of a reference relied upon by the examiner; or

(iii) When speciﬁcally required by the

examiner.

(4) If an English language translation of a

non-English language foreign application is

required, it must be ﬁled together with a statement

that the translation of the certiﬁed copy is accurate.

January 2018R-81

§ 1.55CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(h) Certiﬁed copy in another U.S. patent or

application. The requirement in paragraphs (f) and

(g) of this section for a certiﬁed copy of the foreign

application will be considered satisﬁed in a reissue

application if the patent for which reissue is sought

satisﬁes the requirement of this section for a

certiﬁed copy of the foreign application and such

patent is identiﬁed as containing a certiﬁed copy of

the foreign application. The requirement in

paragraphs (f) and (g) of this section for a certiﬁed

copy of the foreign application will also be

considered satisﬁed in an application if a prior-ﬁled

nonprovisional application for which a beneﬁt is

claimed under 35 U.S.C. 120, 121, 365(c), or 386(c)

contains a certiﬁed copy of the foreign application

and such prior-ﬁled nonprovisional application is

identiﬁed as containing a certiﬁed copy of the

foreign application.

(i) Foreign intellectual property ofﬁce

participating in a priority document exchange

agreement. The requirement in paragraphs (f) and

(g) of this section for a certiﬁed copy of the foreign

application to be ﬁled within the time limit set forth

therein will be considered satisﬁed if:

(1) The foreign application was ﬁled in a

foreign intellectual property ofﬁce participating with

the Ofﬁce in a bilateral or multilateral priority

document exchange agreement (participating foreign

intellectual property ofﬁce), or a copy of the foreign

application was ﬁled in an application subsequently

ﬁled in a participating foreign intellectual property

ofﬁce that permits the Ofﬁce to obtain such a copy;

(2) The claim for priority is presented in an

application data sheet (§ 1.76(b)(6)), identifying the

foreign application for which priority is claimed, by

specifying the application number, country (or

intellectual property authority), day, month, and

year of its ﬁling, and the applicant provides the

information necessary for the participating foreign

intellectual property ofﬁce to provide the Ofﬁce

with access to the foreign application;

(3) The copy of the foreign application is

received by the Ofﬁce from the participating foreign

intellectual property ofﬁce, or a certiﬁed copy of

the foreign application is ﬁled, within the period

speciﬁed in paragraph (g)(1) of this section; and

(4) The applicant ﬁles in a separate

document a request that the Ofﬁce obtain a copy of

the foreign application from a participating

intellectual property ofﬁce that permits the Ofﬁce

to obtain such a copy where, although the foreign

application was not ﬁled in a participating foreign

intellectual property ofﬁce, a copy of the foreign

application was ﬁled in an application subsequently

ﬁled in a participating foreign intellectual property

ofﬁce that permits the Ofﬁce to obtain such a copy.

The request must identify the participating

intellectual property ofﬁce and the subsequent

application by the application number, day, month,

and year of its ﬁling in which a copy of the foreign

application was ﬁled. The request must be ﬁled

within the later of sixteen months from the ﬁling

date of the prior foreign application, four months

from the actual ﬁling date of an application under

35 U.S.C. 111(a), four months from the date on

which the national stage commenced under 35

U.S.C. 371(b) or (f) (§ 1.491(a)), or four months

from the date of the initial submission under 35

U.S.C. 371 to enter the national stage, or the request

must be accompanied by a petition under paragraph

(e) or (f) of this section.

(j) Interim copy. The requirement in paragraph

(f) of this section for a certiﬁed copy of the foreign

application to be ﬁled within the time limit set forth

therein will be considered satisﬁed if:

(1) A copy of the original foreign application

clearly labeled as "Interim Copy," including the

speciﬁcation, and any drawings or claims upon

which it is based, is ﬁled in the Ofﬁce together with

a separate cover sheet identifying the foreign

application by specifying the application number,

country (or intellectual property authority), day,

month, and year of its ﬁling, and stating that the

copy ﬁled in the Ofﬁce is a true copy of the original

application as ﬁled in the foreign country (or

intellectual property authority);

(2) The copy of the foreign application and

separate cover sheet are ﬁled within the later of

sixteen months from the ﬁling date of the prior

foreign application, four months from the actual

ﬁling date of an application under 35 U.S.C. 111(a),

four months from the date on which the national

stage commenced under 35 U.S.C. 371(b) or (f) (§

1.491(a)), four months from the date of the initial

submission under 35 U.S.C. 371 to enter the national

stage, or with a petition under paragraph (e) or (f)

of this section; and

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.55

(3) A certiﬁed copy of the foreign

application is ﬁled within the period speciﬁed in

paragraph (g)(1) of this section.

(k) Requirements for certain applications ﬁled

on or after March 16, 2013.If a nonprovisional

application ﬁled on or after March 16, 2013, other

than a nonprovisional international design

application, claims priority to a foreign application

ﬁled prior to March 16, 2013, and also contains, or

contained at any time, a claim to a claimed invention

that has an effective ﬁling date as deﬁned in § 1.109

that is on or after March 16, 2013, the applicant

must provide a statement to that effect within the

later of four months from the actual ﬁling date of

the nonprovisional application, four months from

the date of entry into the national stage as set forth

in § 1.491 in an international application, sixteen

months from the ﬁling date of the prior foreign

application, or the date that a ﬁrst claim to a claimed

invention that has an effective ﬁling date on or after

March 16, 2013, is presented in the nonprovisional

application. An applicant is not required to provide

such a statement if the applicant reasonably believes

on the basis of information already known to the

individuals designated in § 1.56(c) that the

nonprovisional application does not, and did not at

any time, contain a claim to a claimed invention that

has an effective ﬁling date on or after March 16,

2013.

(l) Inventor’s certiﬁcates. An applicant in a

nonprovisional application may under certain

circumstances claim priority on the basis of one or

more applications for an inventor’s certiﬁcate in a

country granting both inventor’s certiﬁcates and

patents. To claim the right of priority on the basis

of an application for an inventor’s certiﬁcate in such

a country under 35 U.S.C. 119(d), the applicant,

when submitting a claim for such right as speciﬁed

in this section, must include an afﬁdavit or

declaration. The afﬁdavit or declaration must include

a speciﬁc statement that, upon an investigation, he

or she is satisﬁed that to the best of his or her

knowledge, the applicant, when ﬁling the application

for the inventor’s certiﬁcate, had the option to ﬁle

an application for either a patent or an inventor’s

certiﬁcate as to the subject matter of the identiﬁed

claim or claims forming the basis for the claim of

priority.

(m) Time for ﬁling priority claim and certiﬁed

copy of foreign application in an international

design application designating the United States.

In an international design application designating

the United States, the claim for priority may be made

in accordance with the Hague Agreement and the

Hague Agreement Regulations. In a nonprovisional

international design application, the priority claim,

unless made in accordance with the Hague

Agreement and the Hague Agreement Regulations,

must be presented in an application data sheet (§

1.76(b)(6)), identifying the foreign application for

which priority is claimed, by specifying the

application number, country (or intellectual property

authority), day, month, and year of its ﬁling. In a

nonprovisional international design application, the

priority claim and certiﬁed copy must be furnished

in accordance with the time period and other

conditions set forth in paragraph (g) of this section.

(n) Applications ﬁled before September 16,

2012. Notwithstanding the requirement in

paragraphs (d)(1), (e)(1), and (i)(2) of this section

that any priority claim be presented in an application

data sheet (§ 1.76), this requirement in paragraphs

(d)(1), (e)(1), and (i)(2) of this section will be

satisﬁed by the presentation of such priority claim

in the oath or declaration under § 1.63 in a

nonprovisional application ﬁled under 35 U.S.C.

111(a) before September 16, 2012, or resulting from

an international application ﬁled under 35 U.S.C.

363 before September 16, 2012. The provisions of

this paragraph do not apply to any priority claim

submitted for a petition under paragraph (c) of this

section to restore the right of priority to a foreign

application.

(o) Priority under 35 U.S.C. 386(a) or (b). The

right of priority under 35 U.S.C. 386(a) or (b) with

respect to an international design application is

applicable only to nonprovisional applications,

international applications, and international design

applications ﬁled on or after May 13, 2015, and

patents issuing thereon.

(p) Time periods in this section. The time

periods set forth in this section are not extendable,

but are subject to 35 U.S.C. 21(b) (and § 1.7(a)),

PCT Rule 80.5, and Hague Agreement Rule 4(4).

[para. (b), 47 FR 41272, Sept. 17, 1982, effective

Oct. 1 1982; 48 FR 2710, Jan. 20, 1983, effective Feb.

27, 1983; para. (b), 49 FR 554, Jan. 4, 1984, effective

Apr. 1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984,

effective Feb. 11, 1985; para. (a), 54 FR 6893, Feb. 15,

1989, effective Apr. 17, 1989; para. (a) revised, 54 FR

January 2018R-83

§ 1.55CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

9432, March 7, 1989, effective Apr. 17, 1989; para. (a),

54 FR 47518, Nov. 15, 1989, effective Jan. 16, 1990;

para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective

Jan. 3, 1994; revised, 60 FR 20195, Apr.25, 1995,

effective June 8, 1995; para. (a) revised, 62 FR 53132,

Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised,

65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para.

(a) revised and para. (c) added, 65 FR 57024, Sept. 20,

2000, effective Nov. 29, 2000; paras. (a) and (c)

corrected, 65 FR 66502, Nov. 6, 2000, effective Nov. 29,

2000; paras.(a)(1) and (c) revised, 66 FR 67087, Dec. 28,

2001, effective Dec. 28, 2001; para. (c)(3) revised, 68

FR 14332, Mar. 25, 2003, effective May 1, 2003; paras.

(a)(3) and (a)(4) revised, 69 FR 49959, Aug. 12, 2004,

effective Sept. 13, 2004; para. (d) added, 72 FR 1664,

Jan. 16, 2007, effective Jan. 16, 2007; introductory text

of paras. (a)(1)(i) and (c), and para. (d)(1)(ii) revised, 77

FR 48776, Aug. 14, 2012, effective Sept. 16, 2012;

revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16,

2013; corrected 78 FR 16182, Mar. 14, 2013, effective

Mar. 16, 2013; paras. (b)-(f) and (h) revised, 78 FR

62368, Oct. 21, 2013, effective Dec. 18, 2013; revised,

80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

§ 1.56 Duty to disclose information material

to patentability.

[Editor Note: Para. (c)(3) below is applicable only

to patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after September 16, 2012*]

(a) A patent by its very nature is affected with

a public interest. The public interest is best served,

and the most effective patent examination occurs

when, at the time an application is being examined,

the Ofﬁce is aware of and evaluates the teachings

of all information material to patentability. Each

individual associated with the ﬁling and prosecution

of a patent application has a duty of candor and good

faith in dealing with the Ofﬁce, which includes a

duty to disclose to the Ofﬁce all information known

to that individual to be material to patentability as

deﬁned in this section. The duty to disclose

information exists with respect to each pending

claim until the claim is cancelled or withdrawn from

consideration, or the application becomes

abandoned. Information material to the patentability

of a claim that is cancelled or withdrawn from

consideration need not be submitted if the

information is not material to the patentability of

any claim remaining under consideration in the

application. There is no duty to submit information

which is not material to the patentability of any

existing claim. The duty to disclose all information

known to be material to patentability is deemed to

be satisﬁed if all information known to be material

to patentability of any claim issued in a patent was

cited by the Ofﬁce or submitted to the Ofﬁce in the

manner prescribed by §§ 1.97(b)-(d) and 1.98.

However, no patent will be granted on an application

in connection with which fraud on the Ofﬁce was

practiced or attempted or the duty of disclosure was

violated through bad faith or intentional misconduct.

The Ofﬁce encourages applicants to carefully

examine:

(1) Prior art cited in search reports of a

foreign patent ofﬁce in a counterpart application,

and

(2) The closest information over which

individuals associated with the ﬁling or prosecution

of a patent application believe any pending claim

patentably deﬁnes, to make sure that any material

information contained therein is disclosed to the

Ofﬁce.

(b) Under this section, information is material

to patentability when it is not cumulative to

information already of record or being made of

record in the application, and

(1) It establishes, by itself or in combination

with other information, a prima facie case of

unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a

position the applicant takes in:

(i) Opposing an argument of

unpatentability relied on by the Ofﬁce, or

(ii) Asserting an argument of

patentability.

A prima facie case of unpatentability is established

when the information compels a conclusion that a

claim is unpatentable under the preponderance of

evidence, burden-of-proof standard, giving each

term in the claim its broadest reasonable

construction consistent with the speciﬁcation, and

before any consideration is given to evidence which

may be submitted in an attempt to establish a

contrary conclusion of patentability.

prosecution of a patent application within the

meaning of this section are:

(1) Each inventor named in the application;

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.56

(2) Each attorney or agent who prepares or

prosecutes the application; and

(3) Every other person who is substantively

involved in the preparation or prosecution of the

application and who is associated with the inventor,

the applicant, an assignee, or anyone to whom there

is an obligation to assign the application.

(d) Individuals other than the attorney, agent or

inventor may comply with this section by disclosing

information to the attorney, agent, or inventor.

(e) In any continuation-in-part application, the

duty under this section includes the duty to disclose

to the Ofﬁce all information known to the person

to be material to patentability, as deﬁned in

paragraph (b) of this section, which became

available between the ﬁling date of the prior

application and the national or PCT international

ﬁling date of the continuation-in-part application.

[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i),

47 FR 21751, May 19, 1982, effective July 1, 1982; para.

(c), 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983;

paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr.

1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985,

effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28,

1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992,

effective Mar. 16, 1992; para. (e) added, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000; para. (c)(3) revised,

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[* The changes to para. (c)(3) effective Sept. 16,

2012 are applicable only to patent applications ﬁled under

35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See

§ 1.56 (pre-AIA) for para. (c)(3) otherwise in effect.]

§ 1.56 (pre-AIA) Duty to disclose

information material to patentability.

[Editor Note: Para. (c)(3) below is not applicable

to patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after Sept. 16, 2012*]

*****

prosecution of a patent application within the

meaning of this section are:

(1) Each inventor named in the application;

(2) Each attorney or agent who prepares or

prosecutes the application; and

(3) Every other person who is substantively

involved in the preparation or prosecution of the

application and who is associated with the inventor,

with the assignee or with anyone to whom there is

an obligation to assign the application.

(d) Individuals other than the attorney, agent or

inventor may comply with this section by disclosing

information to the attorney, agent, or inventor.

(e) In any continuation-in-part application, the

duty under this section includes the duty to disclose

to the Ofﬁce all information known to the person

to be material to patentability, as deﬁned in

paragraph (b) of this section, which became

available between the ﬁling date of the prior

application and the national or PCT international

ﬁling date of the continuation-in-part application.

[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i),

47 FR 21751, May 19, 1982, effective July 1, 1982; para.

(c), 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983;

paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr.

1, 1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985,

effective Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28,

1988, effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992,

effective Mar. 16, 1992; para. (e) added, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000]

[*See § 1.56 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.57 Incorporation by reference.

[Editor Note: Para. (a) below is only applicable to

patent applications ﬁled under 35 U.S.C. 111(a) on or

after December 18, 2013*]

(a) Subject to the conditions and requirements

of this paragraph, a reference made in the English

language in an application data sheet in accordance

with § 1.76 upon the ﬁling of an application under

35 U.S.C. 111(a) to a previously ﬁled application,

indicating that the speciﬁcation and any drawings

of the application under 35 U.S.C. 111(a) are

replaced by the reference to the previously ﬁled

application, and specifying the previously ﬁled

application by application number, ﬁling date, and

the intellectual property authority or country in

which the previously ﬁled application was ﬁled,

shall constitute the speciﬁcation and any drawings

of the application under 35 U.S.C. 111(a) for

purposes of a ﬁling date under § 1.53(b).

(1) If the applicant has provided a

correspondence address (§ 1.33(a) ), the applicant

will be notiﬁed and given a period of time within

January 2018R-85

§ 1.57CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

which to ﬁle a copy of the speciﬁcation and

drawings from the previously ﬁled application, an

English language translation of the previously ﬁled

application, and the fee required by § 1.17(i) if it is

in a language other than English, and pay the

surcharge required by § 1.16(f), to avoid

abandonment. Such a notice may be combined with

a notice under § 1.53(f).

(2) If the applicant has not provided a

correspondence address (§ 1.33(a) ), the applicant

has three months from the ﬁling date of the

application to ﬁle a copy of the speciﬁcation and

drawings from the previously ﬁled application, an

English language translation of the previously ﬁled

application, and the fee required by § 1.17(i) if it is

in a language other than English, and pay the

surcharge required by § 1.16(f), to avoid

abandonment.

(3) An application abandoned under

paragraph (a)(1) or (a)(2) of this section shall be

treated as having never been ﬁled, unless:

(i) The application is revived under §

1.137; and

(ii) A copy of the speciﬁcation and any

drawings of the previously ﬁled application are ﬁled

in the Ofﬁce.

(4) A certiﬁed copy of the previously ﬁled

application must be ﬁled in the Ofﬁce, unless the

previously ﬁled application is an application ﬁled

under 35 U.S.C. 111 or 363, or the previously ﬁled

application is a foreign priority application and the

conditions set forth in § 1.55(i) are satisﬁed with

respect to such foreign priority application. The

certiﬁed copy of the previously ﬁled application, if

required by this paragraph, must be ﬁled within the

later of four months from the ﬁling date of the

application or sixteen months from the ﬁling date

of the previously ﬁled application, or be

accompanied by a petition including a showing of

good and sufﬁcient cause for the delay and the

petition fee set forth in § 1.17(g).

(b) Subject to the conditions and requirements

of this paragraph, if all or a portion of the

speciﬁcation or drawing(s) is inadvertently omitted

from an application, but the application contains a

claim under § 1.55 for priority of a prior-ﬁled

foreign application or a claim under § 1.78 for the

beneﬁt of a prior-ﬁled provisional, nonprovisional,

international application, or international design

application, that was present on the ﬁling date of

the application, and the inadvertently omitted portion

of the speciﬁcation or drawing(s) is completely

contained in the prior-ﬁled application, the claim

under § 1.55 or 1.78 shall also be considered an

incorporation by reference of the prior-ﬁled

application as to the inadvertently omitted portion

of the speciﬁcation or drawing(s).

(1) The application must be amended to

include the inadvertently omitted portion of the

speciﬁcation or drawing(s) within any time period

set by the Ofﬁce, but in no case later than the close

of prosecution as deﬁned by § 1.114(b), or

abandonment of the application, whichever occurs

earlier. The applicant is also required to:

(i) Supply a copy of the prior-ﬁled

application, except where the prior-ﬁled application

is an application ﬁled under 35 U.S.C. 111;

(ii) Supply an English language

translation of any prior-ﬁled application that is in a

language other than English; and

(iii) Identify where the inadvertently

omitted portion of the speciﬁcation or drawings can

be found in the prior-ﬁled application.

(2) Any amendment to an international

application pursuant to paragraph (b)(1) of this

section shall be effective only as to the United

States, and shall have no effect on the international

ﬁling date of the application. In addition, no request

under this section to add the inadvertently omitted

portion of the speciﬁcation or drawings in an

international application designating the United

States will be acted upon by the Ofﬁce prior to the

entry and commencement of the national stage (§

1.491) or the ﬁling of an application under 35 U.S.C.

111(a) which claims beneﬁt of the international

application. Any omitted portion of the international

application which applicant desires to be effective

as to all designated States, subject to PCT Rule

20.8(b), must be submitted in accordance with PCT

Rule 20.

(3) If an application is not otherwise entitled

to a ﬁling date under § 1.53(b), the amendment must

be by way of a petition pursuant to § 1.53(e)

accompanied by the fee set forth in § 1.17(f).

(4) Any amendment to an international

design application pursuant to paragraph (b)(1) of

this section shall be effective only as to the United

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.57

States and shall have no effect on the ﬁling date of

the application. In addition, no request under this

section to add the inadvertently omitted portion of

the speciﬁcation or drawings in an international

design application will be acted upon by the Ofﬁce

prior to the international design application

becoming a nonprovisional application.

of this section, an incorporation by reference must

be set forth in the speciﬁcation and must:

(1) Express a clear intent to incorporate by

reference by using the root words “incorporat(e)”

and “reference” (e.g., “incorporate by reference”);

and

(2) Clearly identify the referenced patent,

application, or publication.

(d) “Essential material” may be incorporated by

reference, but only by way of an incorporation by

reference to a U.S. patent or U.S. patent application

publication, which patent or patent application

publication does not itself incorporate such essential

material by reference. “Essential material” is

material that is necessary to:

(1) Provide a written description of the

claimed invention, and of the manner and process

of making and using it, in such full, clear, concise,

and exact terms as to enable any person skilled in

the art to which it pertains, or with which it is most

nearly connected, to make and use the same, and

set forth the best mode contemplated by the inventor

of carrying out the invention as required by 35

U.S.C. 112(a);

(2) Describe the claimed invention in terms

that particularly point out and distinctly claim the

invention as required by 35 U.S.C. 112(b); or

(3) Describe the structure, material, or acts

that correspond to a claimed means or step for

performing a speciﬁed function as required by 35

U.S.C. 112(f).

(e) Other material (“Nonessential material”)

may be incorporated by reference to U.S. patents,

U.S. patent application publications, foreign patents,

foreign published applications, prior and

concurrently ﬁled commonly owned U.S.

applications, or non-patent publications. An

incorporation by reference by hyperlink or other

form of browser executable code is not permitted.

(f) The examiner may require the applicant to

supply a copy of the material incorporated by

reference. If the Ofﬁce requires the applicant to

supply a copy of material incorporated by reference,

the material must be accompanied by a statement

that the copy supplied consists of the same material

incorporated by reference in the referencing

application.

(g) Any insertion of material incorporated by

reference into the speciﬁcation or drawings of an

application must be by way of an amendment to the

speciﬁcation or drawings. Such an amendment must

be accompanied by a statement that the material

being inserted is the material previously

incorporated by reference and that the amendment

contains no new matter.

(h) An incorporation of material by reference

that does not comply with paragraphs (c), (d) or (e)

of this section is not effective to incorporate such

material unless corrected within any time period set

by the Ofﬁce, but in no case later than the close of

prosecution as deﬁned by § 1.114(b), or

abandonment of the application, whichever occurs

earlier. In addition:

(1) A correction to comply with paragraph

(c)(1) of this section is permitted only if the

application as ﬁled clearly conveys an intent to

incorporate the material by reference. A mere

reference to material does not convey an intent to

incorporate the material by reference.

(2) A correction to comply with paragraph

(c)(2) of this section is only permitted for material

that was sufﬁciently described to uniquely identify

the document.

(i) An application transmittal letter limited to

the transmittal of a copy of the speciﬁcation and

drawings from a previously ﬁled application

submitted under paragraph (a) or (b) of this section

may be signed by a juristic applicant or patent

owner.

[Added, 69 FR 56481, Sept. 21, 2004, effective

Oct. 21, 2004; para. (a)(3) added, 69 FR 56481, Sept. 21,

2004, effective Nov. 22, 2004; para. (a)(2) revised, 72

FR 51559, Sept. 10, 2007, effective Sept. 10, 2007; paras.

(c)(1)-(3) revised, 77 FR 46615, Aug. 6, 2012, effective

Sept. 16, 2012; revised, 78 FR 62368, Oct. 21, 2013,

effective Dec. 18, 2013; para. (a) revised, para. (b)

introductory text revised and para. (b)(4) added, 80 FR

17918, Apr. 2, 2015, effective May 13, 2015]

January 2018R-87

§ 1.57CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

[* The changes to para. (a) effective Dec. 18, 2013

and May 13, 2015 are applicable only to patent

applications ﬁled on or after Dec. 18, 2013. See § 1.57

(pre-PLT) for para. (a) applicable to applications ﬁled

before Dec. 18, 2013.]

§ 1.57 (pre-PLT) Incorporation by reference.

[Editor Note: Para. (a) below is applicable to

applications ﬁled before December 18, 2013.]

(a) Subject to the conditions and requirements

of this paragraph, if all or a portion of the

speciﬁcation or drawing(s) is inadvertently omitted

from an application, but the application contains a

claim under § 1.55 for priority of a prior-ﬁled

foreign application, or a claim under § 1.78 for the

beneﬁt of a prior-ﬁled provisional, nonprovisional,

or international application, that was present on the

ﬁling date of the application, and the inadvertently

omitted portion of the speciﬁcation or drawing(s)

is completely contained in the prior-ﬁled application,

the claim under § 1.55 or § 1.78 shall also be

considered an incorporation by reference of the

prior-ﬁled application as to the inadvertently omitted

portion of the speciﬁcation or drawing(s).

(1) The application must be amended to

include the inadvertently omitted portion of the

speciﬁcation or drawing(s) within any time period

set by the Ofﬁce, but in no case later than the close

of prosecution as deﬁned by § 1.114(b), or

abandonment of the application, whichever occurs

earlier. The applicant is also required to:

(i) Supply a copy of the prior-ﬁled

application, except where the prior-ﬁled application

is an application ﬁled under 35 U.S.C. 111;

(ii) Supply an English language

translation of any prior-ﬁled application that is in a

language other than English; and

(iii) Identify where the inadvertently

omitted portion of the speciﬁcation or drawings can

be found in the prior-ﬁled application.

(2) Any amendment to an international

application pursuant to this paragraph shall be

effective only as to the United States, and shall have

no effect on the international ﬁling date of the

application. In addition, no request under this section

to add the inadvertently omitted portion of the

speciﬁcation or drawings in an international

application designating the United States will be

acted upon by the Ofﬁce prior to the entry and

commencement of the national stage (§ 1.491) or

the ﬁling of an application under 35 U.S.C. 111(a)

which claims beneﬁt of the international application.

Any omitted portion of the international application

which applicant desires to be effective as to all

designated States, subject to PCT Rule 20.8(b), must

be submitted in accordance with PCT Rule 20.

(3) If an application is not otherwise entitled

to a ﬁling date under § 1.53(b), the amendment must

be by way of a petition pursuant to this paragraph

accompanied by the fee set forth in § 1.17(f)

*****

[Para. (a) above is applicable to patent applications

ﬁled under 35 U.S.C. 111 (pre-PLT (AIA)) before Dec.

18, 2013. See § 1.57 for the current rule, including para.

(a) applicable to patent applications ﬁled under 35 U.S.C.

111 on or after Dec. 18, 2013.]

§ 1.58 Chemical and mathematical formulae

and tables.

(a) The speciﬁcation, including the claims, may

contain chemical and mathematical formulae, but

shall not contain drawings or ﬂow diagrams. The

description portion of the speciﬁcation may contain

tables, but the same tables should not be included

in both the drawings and description portion of the

speciﬁcation. Claims may contain tables either if

necessary to conform to 35 U.S.C. 112 or if

otherwise found to be desirable.

(b) Tables that are submitted in electronic form

(§§ 1.96(c) and 1.821(c)) must maintain the spatial

relationships (e.g., alignment of columns and rows)

of the table elements when displayed so as to

visually preserve the relational information they

convey. Chemical and mathematical formulae must

be encoded to maintain the proper positioning of

their characters when displayed in order to preserve

their intended meaning.

tables must be presented in compliance with §

1.52(a) and (b), except that chemical and

mathematical formulae or tables may be placed in

a landscape orientation if they cannot be presented

satisfactorily in a portrait orientation. Typewritten

characters used in such formulae and tables must

be chosen from a block (nonscript) type font or

lettering style having capital letters which should

R-88January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.57 (pre-PLT)

be at least 0.422 cm. (0.166 inch) high (e.g.,

preferably Arial, Times Roman, or Courier with a

font size of 12), but may be no smaller than 0.21

cm. (0.08 inch) high (e.g., a font size of 6). A space

at least 0.64 cm. (1/4 inch) high should be provided

between complex formulae and tables and the text.

Tables should have the lines and columns of data

closely spaced to conserve space, consistent with a

high degree of legibility.

[43 FR 20463, May 11, 1978; para. (b) removed

and reserved, para. (c) amended, 61 FR 42790, Aug. 19,

1996, effective Sept. 23, 1996; para. (b) added, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 69

FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para.

(a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec.

18, 2013]

§ 1.59 Expungement of information or copy

of papers in application ﬁle.

(a)(1) Information in an application will not

be expunged, except as provided in paragraph (b)

of this section or § 41.7(a) or § 42.7(a) of this title.

(2) Information forming part of the original

disclosure (i.e., written speciﬁcation including the

claims, drawings, and any preliminary amendment

present on the ﬁling date of the application) will not

be expunged from the application ﬁle.

(b) An applicant may request that the Ofﬁce

expunge information, other than what is excluded

by paragraph (a)(2) of this section, by ﬁling a

petition under this paragraph. Any petition to

expunge information from an application must

include the fee set forth in § 1.17(g) and establish

to the satisfaction of the Director that the

expungement of the information is appropriate in

which case a notice granting the petition for

expungement will be provided.

of the fee speciﬁed in § 1.19(b), the Ofﬁce will

furnish copies of an application, unless the

application has been disposed of (see §§ 1.53(e),

(f), and (g)). The Ofﬁce cannot provide or certify

copies of an application that has been disposed of.

[48 FR 2710, Jan. 20, 1983, effective Feb. 27,

1983; 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984;

49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50

FR 23123, May 31, 1985, effective Feb. 11, 1985;

revised, 60 FR 20195, Apr. 25, 1995, effective June 8,

1995; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997; para. (b) revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; para. (b) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; revised, 68 FR

38611, June 30, 2003, effective July 30, 2003; para. (a)(1)

revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,

2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004,

effective Nov. 22, 2004; para. (a)(1) revised, 77 FR

46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (a)(2)

revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16,

2012]

§ 1.60 [Reserved]

[48 FR 2710, Jan. 20, 1983, effective Feb. 27,

1983; 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984;

50 FR 9379, Mar. 7, 1985, effective May 8, 1985; paras.

(a), (b) and (c), 54 FR 47519, Nov. 15, 1989, effective

Jan. 16, 1990; paras. (b) and (c) revised, para. (d) added,

57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; para.

(b) revised, 60 FR 20195, Apr. 25, 1995, effective June

8, 1995; removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

§ 1.61 [Reserved]

(Editor’s note: Substance is now in § 1.495)

§ 1.62 [Reserved]

[47 FR 47244, Oct. 25, 1982, added effective Feb.

27, 1983; 48 FR 2710, Jan. 20, 1983, effective date Feb.

27, 1983; paras. (a) and (d), 49 FR 555, Jan. 4, 1984,

effective Apr. 1, 1984; paras. (a), (c), and (h), 50 FR

9380, Mar. 7, 1985, effective May 8, 1985; paras. (e) and

(j), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 1990;

paras. (a) and (e) revised, 60 FR 20195, Apr. 25, 1995,

effective June 8, 1995; para. (f) revised, 61 FR 42790,

Aug. 19, 1996, effective Sept. 23, 1996; removed and

reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997]

OATH OR DECLARATION

§ 1.63 Inventor’s oath or declaration.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111, 363, or 385 on or after

September 16, 2012*]

(a) The inventor, or each individual who is a

joint inventor of a claimed invention, in an

application for patent must execute an oath or

declaration directed to the application, except as

provided for in § 1.64. An oath or declaration under

this section must:

January 2018R-89

§ 1.63CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) Identify the inventor or joint inventor

executing the oath or declaration by his or her legal

name;

(2) Identify the application to which it is

directed;

(3) Include a statement that the person

executing the oath or declaration believes the named

inventor or joint inventor to be the original inventor

or an original joint inventor of a claimed invention

in the application for which the oath or declaration

is being submitted; and

(4) State that the application was made or

was authorized to be made by the person executing

the oath or declaration.

(b) Unless the following information is supplied

in an application data sheet in accordance with §

1.76, the oath or declaration must also identify:

(1) Each inventor by his or her legal name;

and

(2) A mailing address where the inventor

customarily receives mail, and residence, if an

inventor lives at a location which is different from

where the inventor customarily receives mail, for

each inventor.

declaration for an application unless that person has

reviewed and understands the contents of the

application, including the claims, and is aware of

the duty to disclose to the Ofﬁce all information

known to the person to be material to patentability

as deﬁned in § 1.56. There is no minimum age for

a person to be qualiﬁed to execute an oath or

declaration, but the person must be competent to

execute, i.e., understand, the document that the

person is executing.

(d)(1) A newly executed oath or declaration

under § 1.63, or substitute statement under § 1.64,

is not required under §§ 1.51(b)(2) and 1.53(f), or

under §§ 1.497 and 1.1021(d), for an inventor in a

continuing application that claims the beneﬁt under

35 U.S.C. 120, 121, 365(c), or 386(c) in compliance

with § 1.78 of an earlier-ﬁled application, provided

that an oath or declaration in compliance with this

section, or substitute statement under § 1.64, was

executed by or with respect to such inventor and

was ﬁled in the earlier-ﬁled application, and a copy

of such oath, declaration, or substitute statement

showing the signature or an indication thereon that

it was executed, is submitted in the continuing

application.

(2) The inventorship of a continuing

application ﬁled under 35 U.S.C. 111(a) is the

inventor or joint inventors speciﬁed in the

application data sheet ﬁled before or concurrently

with the copy of the inventor’s oath or declaration

from the earlier-ﬁled application. If an application

data sheet is not ﬁled before or concurrently with

the copy of the inventor’s oath or declaration from

the earlier-ﬁled application, the inventorship is the

inventorship set forth in the copy of the inventor’s

oath or declaration from the earlier-ﬁled application,

unless it is accompanied by a statement signed

pursuant to § 1.33(b) stating the name of each

inventor in the continuing application.

(3) Any new joint inventor named in the

continuing application must provide an oath or

declaration in compliance with this section, except

as provided for in § 1.64 .

(e)(1) An assignment may also serve as an

oath or declaration required by this section if the

assignment as executed:

(i) Includes the information and

statements required under paragraphs (a) and (b) of

this section; and

(ii) A copy of the assignment is recorded

as provided for in part 3 of this chapter.

(2) Any reference to an oath or declaration

under this section includes an assignment as

provided for in this paragraph.

(f) With respect to an application naming

only one inventor, any reference to the inventor’s

oath or declaration in this chapter includes a

substitute statement executed under § 1.64. With

respect to an application naming more than one

inventor, any reference to the inventor’s oath or

declaration in this chapter means the oaths,

declarations, or substitute statements that have been

collectively executed by or with respect to all of the

joint inventors, unless otherwise clear from the

context.

(g) An oath or declaration under this section,

including the statement provided for in paragraph

(e) of this section, must be executed (i.e., signed)

in accordance either with § 1.66 or with an

acknowledgment that any willful false statement

made in such declaration or statement is punishable

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.63

under 18 U.S.C. 1001 by ﬁne or imprisonment of

not more than ﬁve (5) years, or both.

(h) An oath or declaration ﬁled at any time

pursuant to 35 U.S.C. 115(h)(1) will be placed in

the ﬁle record of the application or patent, but may

not necessarily be reviewed by the Ofﬁce. Any

request for correction of the named inventorship

must comply with § 1.48 in an application and §

1.324 in a patent.

[48 FR 2711, Jan. 20, 1983, added effective Feb.

27, 1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and

(d), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992;

para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; paras. (a) & (d) revised, para. (e) added,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras.

(a), (b), (c), and (e) revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; para. (d)(4) revised, 69 FR 56481,

Sept. 21, 2004, effective Oct. 21, 2004; revised, 77 FR

48776, Aug. 14, 2012, effective Sept. 16, 2012; para.

(d)(1) revised, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

[*The changes effective Sept. 16, 2012 and May

13, 2015 are applicable only to patent applications ﬁled

on or after Sept. 16, 2012. See § 1.63 (pre-AIA) for the

rule applicable to patent applications ﬁled before Sept.

16, 2012.]

§ 1.63 (pre-AIA) Oath or declaration.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111, 363, or 385 on or after

September 16, 2012*]

(a) An oath or declaration ﬁled under §

1.51(b)(2) as a part of a nonprovisional application

must:

(1) Be executed, i.e., signed, in accordance

with either § 1.66 or § 1.68. There is no minimum

age for a person to be qualiﬁed to sign, but the

person must be competent to sign, i.e., understand

the document that the person is signing;

(2) Identify each inventor by full name,

including the family name, and at least one given

name without abbreviation together with any other

given name or initial;

(3) Identify the country of citizenship of each

inventor; and

(4) State that the person making the oath or

declaration believes the named inventor or inventors

to be the original and ﬁrst inventor or inventors of

the subject matter which is claimed and for which

a patent is sought.

(b) In addition to meeting the requirements of

paragraph (a) of this section, the oath or declaration

must also:

(1) Identify the application to which it is

directed;

(2) State that the person making the oath or

declaration has reviewed and understands the

contents of the application, including the claims, as

amended by any amendment speciﬁcally referred

to in the oath or declaration; and

(3) State that the person making the oath or

declaration acknowledges the duty to disclose to the

Ofﬁce all information known to the person to be

material to patentability as deﬁned in § 1.56.

application data sheet in accordance with § 1.76,

the oath or declaration must also identify:

(1) The mailing address, and the residence

if an inventor lives at a location which is different

from where the inventor customarily receives mail,

of each inventor; and

(2) Any foreign application for patent (or

inventor’s certiﬁcate) for which a claim for priority

is made pursuant to § 1.55, and any foreign

application having a ﬁling date before that of the

application on which priority is claimed, by

specifying the application number, country, day,

month, and year of its ﬁling.

(d)(1) A newly executed oath or declaration

is not required under § 1.51(b)(2) and § 1.53(f) in

a continuation or divisional application, provided

that:

(i) The prior nonprovisional application

contained an oath or declaration as prescribed by

paragraphs (a) through (c) of this section;

(ii) The continuation or divisional

application was ﬁled by all or by fewer than all of

the inventors named in the prior application;

(iii) The speciﬁcation and drawings ﬁled

in the continuation or divisional application contain

no matter that would have been new matter in the

prior application; and

(iv) A copy of the executed oath or

declaration ﬁled in the prior application, showing

January 2018R-91

§ 1.63

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

the signature or an indication thereon that it was

signed, is submitted for the continuation or

divisional application.

(2) The copy of the executed oath or

declaration submitted under this paragraph for a

continuation or divisional application must be

accompanied by a statement requesting the deletion

of the name or names of the person or persons who

are not inventors in the continuation or divisional

application.

(3) Where the executed oath or declaration

of which a copy is submitted for a continuation or

divisional application was originally ﬁled in a prior

application accorded status under § 1.47, the copy

of the executed oath or declaration for such prior

application must be accompanied by:

(i) A copy of the decision granting a

petition to accord § 1.47 status to the prior

application, unless all inventors or legal

representatives have ﬁled an oath or declaration to

join in an application accorded status under § 1.47

of which the continuation or divisional application

claims a beneﬁt under 35 U.S.C. 120, 121, or 365(c);

and

(ii) If one or more inventor(s) or legal

representative(s) who refused to join in the prior

application or could not be found or reached has

subsequently joined in the prior application or

another application of which the continuation or

divisional application claims a beneﬁt under 35

U.S.C. 120, 121, or 365(c), a copy of the

subsequently executed oath(s) or declaration(s) ﬁled

by the inventor or legal representative to join in the

application.

(4) Where the power of attorney or

correspondence address was changed during the

prosecution of the prior application, the change in

power of attorney or correspondence address must

be identiﬁed in the continuation or divisional

application. Otherwise, the Ofﬁce may not recognize

in the continuation or divisional application the

change of power of attorney or correspondence

address during the prosecution of the prior

application.

(5) A newly executed oath or declaration

must be ﬁled in a continuation or divisional

application naming an inventor not named in the

prior application.

(e) A newly executed oath or declaration must

be ﬁled in any continuation-in-part application,

which application may name all, more, or fewer

than all of the inventors named in the prior

application.

[48 FR 2711, Jan. 20, 1983, added effective Feb.

27, 1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and

(d), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992;

para. (a) revised, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; paras. (a) & (d) revised, para. (e) added,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras.

(a), (b), (c), and (e) revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; para. (d)(4) revised, 69 FR 56481,

Sept. 21, 2004, effective Oct. 21, 2004]

[*See § 1.63 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.64 Substitute statement in lieu of an oath

or declaration.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) An applicant under § 1.43, 1.45 or 1.46 may

execute a substitute statement in lieu of an oath or

declaration under § 1.63 if the inventor is deceased,

is under a legal incapacity, has refused to execute

the oath or declaration under § 1.63, or cannot be

found or reached after diligent effort.

(b) A substitute statement under this section

must:

(1) Comply with the requirements of §

1.63(a), identifying the inventor or joint inventor

with respect to whom a substitute statement in lieu

of an oath or declaration is executed, and stating

upon information and belief the facts which such

inventor is required to state;

(2) Identify the person executing the

substitute statement and the relationship of such

person to the inventor or joint inventor with respect

to whom the substitute statement is executed, and

unless such information is supplied in an application

data sheet in accordance with § 1.76, the residence

and mailing address of the person signing the

substitute statement;

(3) Identify the circumstances permitting the

person to execute the substitute statement in lieu of

an oath or declaration under § 1.63, namely whether

the inventor is deceased, is under a legal incapacity,

R-92January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.64

cannot be found or reached after a diligent effort

was made, or has refused to execute the oath or

declaration under § 1.63; and

(4) Unless the following information is

supplied in an application data sheet in accordance

with § 1.76, also identify:

(i) Each inventor by his or her legal

name; and

(ii) The last known mailing address

where the inventor customarily receives mail, and

last known residence, if an inventor lives at a

location which is different from where the inventor

customarily receives mail, for each inventor who is

not deceased or under a legal incapacity.

statement provided for in this section for an

application unless that person has reviewed and

understands the contents of the application,

including the claims, and is aware of the duty to

disclose to the Ofﬁce all information known to the

person to be material to patentability as deﬁned in

§ 1.56.

(d) Any reference to an inventor’s oath or

declaration includes a substitute statement provided

for in this section.

(e) A substitute statement under this section

must contain an acknowledgment that any willful

false statement made in such statement is punishable

under section 1001 of title 18 by ﬁne or

imprisonment of not more than 5 years, or both.

(f) A nonsigning inventor or legal representative

may subsequently join in the application by

submitting an oath or declaration under § 1.63. The

submission of an oath or declaration by a nonsigning

inventor or legal representative in an application

ﬁled under § 1.43, 1.45 or 1.46 will not permit the

nonsigning inventor or legal representative to revoke

or grant a power of attorney.

[48 FR 2711, Jan. 20, 1983, added effective Feb.

27, 1983; revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; revised, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.64 (pre-AIA) for the rule otherwise in effect.]

§ 1.64 (pre-AIA) Person making oath or

declaration.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) The oath or declaration (§ 1.63), including

any supplemental oath or declaration (§ 1.67), must

be made by all of the actual inventors except as

provided for in §§ 1.42, 1.43, 1.47, or § 1.67.

(b) If the person making the oath or declaration

or any supplemental oath or declaration is not the

inventor (§§ 1.42, 1.43, 1.47, or § 1.67), the oath or

declaration shall state the relationship of the person

to the inventor, and, upon information and belief,

the facts which the inventor is required to state. If

the person signing the oath or declaration is the legal

representative of a deceased inventor, the oath or

declaration shall also state that the person is a legal

representative and the citizenship, residence, and

mailing address of the legal representative.

[48 FR 2711, Jan. 20, 1983, added effective Feb.

27, 1983; revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000]

[*See § 1.64 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.66 Statements under oath.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

An oath or afﬁrmation may be made before any

person within the United States authorized by law

to administer oaths. An oath made in a foreign

country may be made before any diplomatic or

consular ofﬁcer of the United States authorized to

administer oaths, or before any ofﬁcer having an

ofﬁcial seal and authorized to administer oaths in

the foreign country in which the applicant may be,

whose authority shall be proved by a certiﬁcate of

a diplomatic or consular ofﬁcer of the United States,

or by an apostille of an ofﬁcial designated by a

foreign country which, by treaty or convention,

accords like effect to apostilles of designated

ofﬁcials in the United States. The oath shall be

attested in all cases in this and other countries, by

the proper ofﬁcial seal of the ofﬁcer before whom

January 2018R-93

§ 1.66CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

the oath or afﬁrmation is made. Such oath or

afﬁrmation shall be valid as to execution if it

complies with the laws of the State or country where

made. When the person before whom the oath or

afﬁrmation is made in this country is not provided

with a seal, his ofﬁcial character shall be established

by competent evidence, as by a certiﬁcate from a

clerk of a court of record or other proper ofﬁcer

having a seal.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; revised, 77 FR 48776, Aug. 14, 2012, effective

Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.66 (pre-AIA) for the rule otherwise in effect.]

§ 1.66 (pre-AIA) Ofﬁcers authorized to

administer oaths.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) The oath or afﬁrmation may be made before

any person within the United States authorized by

law to administer oaths. An oath made in a foreign

country may be made before any diplomatic or

consular ofﬁcer of the United States authorized to

administer oaths, or before any ofﬁcer having an

ofﬁcial seal and authorized to administer oaths in

the foreign country in which the applicant may be,

whose authority shall be proved by a certiﬁcate of

a diplomatic or consular ofﬁcer of the United States,

or by an apostille of an ofﬁcial designated by a

foreign country which, by treaty or convention,

accords like effect to apostilles of designated

ofﬁcials in the United States. The oath shall be

attested in all cases in this and other countries, by

the proper ofﬁcial seal of the ofﬁcer before whom

the oath or afﬁrmation is made. Such oath or

afﬁrmation shall be valid as to execution if it

complies with the laws of the State or country where

made. When the person before whom the oath or

afﬁrmation is made in this country is not provided

with a seal, his ofﬁcial character shall be established

by competent evidence, as by a certiﬁcate from a

clerk of a court of record or other proper ofﬁcer

having a seal.

(b) When the oath is taken before an ofﬁcer in

a country foreign to the United States, any

accompanying application papers, except the

drawings, must be attached together with the oath

and a ribbon passed one or more times through all

the sheets of the application, except the drawings,

and the ends of said ribbon brought together under

the seal before the latter is afﬁxed and impressed,

or each sheet must be impressed with the ofﬁcial

seal of the ofﬁcer before whom the oath is taken. If

the papers as ﬁled are not properly ribboned or each

sheet impressed with the seal, the case will be

accepted for examination, but before it is allowed,

duplicate papers, prepared in compliance with the

foregoing sentence, must be ﬁled.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982]

[*See § 1.66 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.67 Supplemental oath or declaration.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) The applicant may submit an inventor’s oath

or declaration meeting the requirements of § 1.63,

§ 1.64, or § 1.162 to correct any deﬁciencies or

inaccuracies present in an earlier-ﬁled inventor’s

oath or declaration. Deﬁciencies or inaccuracies due

to the failure to meet the requirements of § 1.63(b)

in an oath or declaration may be corrected with an

application data sheet in accordance with § 1.76,

except that any correction of inventorship must be

pursuant to § 1.48.

(b) A supplemental inventor’s oath or

declaration under this section must be executed by

the person whose inventor’s oath or declaration is

being withdrawn, replaced, or otherwise corrected.

executed an oath or declaration in compliance with

35 U.S.C. 115 and § 1.63 or 1.162 for an application

to provide an additional inventor’s oath or

declaration for the application.

(d) No new matter may be introduced into a

nonprovisional application after its ﬁling date even

if an inventor’s oath or declaration is ﬁled to correct

deﬁciencies or inaccuracies present in the

earlier-ﬁled inventor’s oath or declaration.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.66 (pre-AIA)

[48 FR 2711, Jan. 20, 1983, effective Feb. 27,

1983; para. (c) added, 57 FR 2021, Jan. 17, 1992,

effective Mar. 16, 1992; para. (b) revised, 60 FR 20195,

Apr. 25, 1995, effective June 8, 1995; para. (b) revised,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

(a) revised and para. (c) removed and reserved, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 77

FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.67 (pre-AIA) for the rule otherwise in effect.]

§ 1.67 (pre-AIA) Supplemental oath or

declaration.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) The Ofﬁce may require, or inventors and

applicants may submit, a supplemental oath or

declaration meeting the requirements of § 1.63 or §

1.162 to correct any deﬁciencies or inaccuracies

present in the earlier ﬁled oath or declaration.

(1) Deﬁciencies or inaccuracies relating to

all the inventors or applicants (§§ 1.42, 1.43, or §

1.47) may be corrected with a supplemental oath or

declaration signed by all the inventors or applicants.

(2) Deﬁciencies or inaccuracies relating to

fewer than all of the inventor(s) or applicant(s) (§§

1.42, 1.43 or § 1.47) may be corrected with a

supplemental oath or declaration identifying the

entire inventive entity but signed only by the

inventor(s) or applicant(s) to whom the error or

deﬁciency relates.

(3) Deﬁciencies or inaccuracies due to the

failure to meet the requirements of § 1.63(c) (e.g.,

to correct the omission of a mailing address of an

inventor) in an oath or declaration may be corrected

with an application data sheet in accordance with §

1.76.

(4) Submission of a supplemental oath or

declaration or an application data sheet (§ 1.76), as

opposed to who must sign the supplemental oath or

declaration or an application data sheet, is governed

by § 1.33(a)(2) and paragraph (b) of this section.

(b) A supplemental oath or declaration meeting

the requirements of § 1.63 must be ﬁled when a

claim is presented for matter originally shown or

described but not substantially embraced in the

statement of invention or claims originally presented

or when an oath or declaration submitted in

accordance with § 1.53(f) after the ﬁling of the

speciﬁcation and any required drawings speciﬁcally

and improperly refers to an amendment which

includes new matter. No new matter may be

introduced into a nonprovisional application after

its ﬁling date even if a supplemental oath or

declaration is ﬁled. In proper situations, the oath or

declaration here required may be made on

information and belief by an applicant other than

the inventor.

[48 FR 2711, Jan. 20, 1983, effective Feb. 27,

1983; para. (c) added, 57 FR 2021, Jan. 17, 1992,

effective Mar. 16, 1992; para. (b) revised, 60 FR 20195,

Apr. 25, 1995, effective June 8, 1995; para. (b) revised,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

(a) revised and para. (c) removed and reserved, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000]

[*See § 1.67 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.68 Declaration in lieu of oath.

Any document to be ﬁled in the Patent and

Trademark Ofﬁce and which is required by any law,

rule, or other regulation to be under oath may be

subscribed to by a written declaration. Such

declaration may be used in lieu of the oath otherwise

required, if, and only if, the declarant is on the same

document, warned that willful false statements and

the like are punishable by ﬁne or imprisonment, or

both (18 U.S.C. 1001) and may jeopardize the

validity of the application or any patent issuing

thereon. The declarant must set forth in the body of

the declaration that all statements made of the

declarant’s own knowledge are true and that all

statements made on information and belief are

believed to be true.

[49 FR 48416, Dec. 12, 1984, effective Feb. 11,

1985]

§ 1.69 Foreign language oaths and

declarations.

(a) Whenever an individual making an oath or

declaration cannot understand English, the oath or

declaration must be in a language that such

January 2018R-95

§ 1.69CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

individual can understand and shall state that such

individual understands the content of any documents

to which the oath or declaration relates.

(b) Unless the text of any oath or declaration in

a language other than English is in a form provided

by the Patent and Trademark Ofﬁce or in accordance

with PCT Rule 4.17(iv), it must be accompanied by

an English translation together with a statement that

the translation is accurate, except that in the case of

an oath or declaration ﬁled under § 1.63, the

translation may be ﬁled in the Ofﬁce no later than

two months from the date applicant is notiﬁed to

ﬁle the translation.

[42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2711,

Jan. 20, 1983, effective Feb. 27, 1983; para. (b) revised,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

(b) revised, 69 FR 56481, Sept. 21, 2004, effective Oct.

21, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005,

effective Dec. 8, 2004]

§ 1.70 [Reserved]

[52 FR 20046, May 28, 1987, effective July 1,

1987]

SPECIFICATION

§ 1.71 Detailed description and speciﬁcation

of the invention.

(a) The speciﬁcation must include a written

description of the invention or discovery and of the

manner and process of making and using the same,

and is required to be in such full, clear, concise, and

exact terms as to enable any person skilled in the

art or science to which the invention or discovery

appertains, or with which it is most nearly

connected, to make and use the same.

(b) The speciﬁcation must set forth the precise

invention for which a patent is solicited, in such

manner as to distinguish it from other inventions

and from what is old. It must describe completely

a speciﬁc embodiment of the process, machine,

manufacture, composition of matter or improvement

invented, and must explain the mode of operation

or principle whenever applicable. The best mode

contemplated by the inventor of carrying out his

invention must be set forth.

speciﬁcation must particularly point out the part or

parts of the process, machine, manufacture, or

composition of matter to which the improvement

relates, and the description should be conﬁned to

the speciﬁc improvement and to such parts as

necessarily cooperate with it or as may be necessary

to a complete understanding or description of it.

(d) A copyright or mask work notice may be

placed in a design or utility patent application

adjacent to copyright and mask work material

contained therein. The notice may appear at any

appropriate portion of the patent application

disclosure. For notices in drawings, see § 1.84(s).

The content of the notice must be limited to only

those elements provided for by law. For example,

Doe” (17 U.S.C. 909) would be properly limited

and, under current statutes, legally sufﬁcient notices

of copyright and mask work, respectively. Inclusion

of a copyright or mask work notice will be permitted

only if the authorization language set forth in

paragraph (e) of this section is included at the

beginning (preferably as the ﬁrst paragraph) of the

speciﬁcation.

(e) The authorization shall read as follows:

A portion of the disclosure of this patent

document contains material which is subject

to (copyright or mask work) protection. The

(copyright or mask work) owner has no

objection to the facsimile reproduction by

anyone of the patent document or the patent

disclosure, as it appears in the Patent and

Trademark Ofﬁce patent ﬁle or records, but

otherwise reserves all (copyright or mask work)

rights whatsoever.

(f) The speciﬁcation must commence on a

separate sheet. Each sheet including part of the

speciﬁcation may not include other parts of the

application or other information. The claim(s),

abstract and sequence listing (if any) should not be

included on a sheet including any other part of the

application.

(g)(1) The speciﬁcation may disclose or be

amended to disclose the names of the parties to a

joint research agreement as deﬁned in § 1.9(e).

(2) An amendment under paragraph (g)(1)

of this section must be accompanied by the

processing fee set forth in § 1.17(i) if not ﬁled within

one of the following time periods:

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.70

(i) Within three months of the ﬁling date

of a national application;

(ii) Within three months of the date of

entry of the national stage as set forth in § 1.491 in

an international application;

(iii) Before the mailing of a ﬁrst Ofﬁce

action on the merits; or

(iv) Before the mailing of a ﬁrst Ofﬁce

action after the ﬁling of a request for continued

examination under § 1.114.

(3) If an amendment under paragraph (g)(1)

of this section is ﬁled after the date the issue fee is

paid, the patent as issued may not necessarily

include the names of the parties to the joint research

agreement. If the patent as issued does not include

the names of the parties to the joint research

agreement, the patent must be corrected to include

the names of the parties to the joint research

agreement by a certiﬁcate of correction under 35

U.S.C. 255 and § 1.323 for the amendment to be

effective.

[paras. (d) and (e), 53 FR 47808, Nov. 28, 1988,

effective Jan. 1, 1989; para. (d), 58 FR 38719, July 20,

1993, effective Oct. 1, 1993; para. (f) added, 68 FR

38611, June 30, 2003, effective July 30, 2003; para. (g)

added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10,

2004; para. (g) revised, 70 FR 54259, Sept. 14, 2005,

effective Sept. 14, 2005; para. (g)(1) revised, 78 FR

11024, Feb. 14, 2013, effective Mar. 16, 2013]

§ 1.72 Title and abstract.

(a) The title of the invention may not exceed

500 characters in length and must be as short and

speciﬁc as possible. Characters that cannot be

captured and recorded in the Ofﬁce’s automated

information systems may not be reﬂected in the

Ofﬁce’s records in such systems or in documents

created by the Ofﬁce. Unless the title is supplied in

an application data sheet (§ 1.76), the title of the

invention should appear as a heading on the ﬁrst

page of the speciﬁcation.

(b) A brief abstract of the technical disclosure

in the speciﬁcation must commence on a separate

sheet, preferably following the claims, under the

heading “Abstract” or “Abstract of the Disclosure.”

The sheet or sheets presenting the abstract may not

include other parts of the application or other

material. The abstract must be as concise as the

disclosure permits, preferably not exceeding 150

words in length. The purpose of the abstract is to

enable the Ofﬁce and the public generally to

determine quickly from a cursory inspection the

nature and gist of the technical disclosure.

[31 FR 12922, Oct. 4, 1966; 43 FR 20464, May

11, 1978; para. (b) amended, 61 FR 42790, Aug. 19,

1996, effective Sept. 23, 1996; revised, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised,

65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000;

para. (b) revised, 68 FR 38611, June 30, 2003, effective

July 30, 2003; para. (b) revised, 78 FR 62368, Oct. 21,

2013, effective Dec. 18, 2013]

§ 1.73 Summary of the invention.

A brief summary of the invention indicating its

nature and substance, which may include a statement

of the object of the invention, should precede the

detailed description. Such summary should, when

set forth, be commensurate with the invention as

claimed and any object recited should be that of the

invention as claimed.

§ 1.74 Reference to drawings.

When there are drawings, there shall be a brief

description of the several views of the drawings and

the detailed description of the invention shall refer

to the different views by specifying the numbers of

the ﬁgures and to the different parts by use of

reference letters or numerals (preferably the latter).

§ 1.75 Claim(s).

(a) The speciﬁcation must conclude with a claim

particularly pointing out and distinctly claiming the

subject matter which the applicant regards as his

invention or discovery.

(b) More than one claim may be presented

provided they differ substantially from each other

and are not unduly multiplied.

dependent form, referring back to and further

limiting another claim or claims in the same

application. Any dependent claim which refers to

more than one other claim (“multiple dependent

claim”) shall refer to such other claims in the

alternative only. A multiple dependent claim shall

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§ 1.75CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

not serve as a basis for any other multiple dependent

claim. For fee calculation purposes under § 1.16, a

multiple dependent claim will be considered to be

that number of claims to which direct reference is

made therein. For fee calculation purposes also, any

claim depending from a multiple dependent claim

will be considered to be that number of claims to

which direct reference is made in that multiple

dependent claim. In addition to the other ﬁling fees,

any original application which is ﬁled with, or is

amended to include, multiple dependent claims must

have paid therein the fee set forth in § 1.16(j).

Claims in dependent form shall be construed to

include all the limitations of the claim incorporated

by reference into the dependent claim. A multiple

dependent claim shall be construed to incorporate

by reference all the limitations of each of the

particular claims in relation to which it is being

considered.

(d)(1) The claim or claims must conform to

the invention as set forth in the remainder of the

speciﬁcation and the terms and phrases used in the

claims must ﬁnd clear support or antecedent basis

in the description so that the meaning of the terms

in the claims may be ascertainable by reference to

the description. (See § 1.58(a).)

(2) See §§ 1.141 to 1.146 as to claiming

different inventions in one application.

(e) Where the nature of the case admits, as in

the case of an improvement, any independent claim

should contain in the following order:

(1) A preamble comprising a general

description of all the elements or steps of the

claimed combination which are conventional or

known,

(2) A phrase such as “wherein the

improvement comprises,” and

(3) Those elements, steps and/or

relationships which constitute that portion of the

claimed combination which the applicant considers

as the new or improved portion.

(f) If there are several claims, they shall be

numbered consecutively in Arabic numerals.

(g) The least restrictive claim should be

presented as claim number 1, and all dependent

claims should be grouped together with the claim

or claims to which they refer to the extent

practicable.

(h) The claim or claims must commence on a

separate physical sheet or electronic page. Any sheet

including a claim or portion of a claim may not

contain any other parts of the application or other

material.

(i) Where a claim sets forth a plurality of

elements or steps, each element or step of the claim

should be separated by a line indentation.

[31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3,

1971; 37 FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31,

1978; para. (c), 47 FR 41272, Sept. 17, 1982, effective

Oct. 1, 1982; para. (g) amended, paras. (h) and (i) added,

61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;

para. (h) revised, 68 FR 38611, June 30, 2003, effective

July 30, 2003; para. (h) revised, 68 FR 38611, June 30,

2003, effective July 30, 2003; para. (c) revised, 70 FR

3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (b)

and (c) revised, 72 FR 46716, Aug. 21, 2007

(implementation enjoined and never became effective);

paras. (b) and (c) revised, 74 FR 52686, Oct. 14, 2009,

effective Oct. 14, 2009 (to remove changes made by the

ﬁnal rules in 72 FR 46716 from the CFR)]

§ 1.76 Application data sheet.

[Editor Note: Some paragraphs have limited

applicability. See * below for details.]

(a) Application data sheet. An application data

sheet is a sheet or sheets that may be submitted in

a provisional application under 35 U.S.C. 111(b), a

nonprovisional application under 35 U.S.C. 111(a),

a nonprovisional international design application,

or a national stage application under 35 U.S.C. 371

and must be submitted when required by § 1.55 or

1.78 to claim priority to or the beneﬁt of a prior-ﬁled

application under 35 U.S.C. 119, 120, 121, 365, or

386. An application data sheet must be titled

"Application Data Sheet." An application data sheet

must contain all of the section headings listed in

paragraph (b) of this section, except as provided in

paragraph (c)(2) of this section, with any appropriate

data for each section heading. If an application data

sheet is provided, the application data sheet is part

of the application for which it has been submitted.

(b) Bibliographic data. Bibliographic data as

used in paragraph (a) of this section includes:

(1) Inventor information. This information

includes the legal name, residence, and mailing

address of the inventor or each joint inventor.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.76

(2) Correspondence information. This

information includes the correspondence address,

which may be indicated by reference to a customer

number, to which correspondence is to be directed

(see § 1.33(a)).

(3) Application information. This

information includes the title of the invention, the

total number of drawing sheets, a suggested drawing

ﬁgure for publication (in a nonprovisional

application), any docket number assigned to the

application, the type of application (e.g., utility,

plant, design, reissue, provisional), whether the

application discloses any signiﬁcant part of the

subject matter of an application under a secrecy

order pursuant to § 5.2 of this chapter (see § 5.2(c)),

and, for plant applications, the Latin name of the

genus and species of the plant claimed, as well as

the variety denomination. When information

concerning the previously ﬁled application is

required under § 1.57(a), application information

also includes the reference to the previously ﬁled

application, indicating that the speciﬁcation and any

drawings of the application are replaced by the

reference to the previously ﬁled application, and

specifying the previously ﬁled application by

application number, ﬁling date, and the intellectual

property authority or country in which the previously

ﬁled application was ﬁled.

(4) Representative information. This

information includes the registration number of each

practitioner having a power of attorney in the

application (preferably by reference to a customer

number). Providing this information in the

application data sheet does not constitute a power

of attorney in the application (see § 1.32).

(5) Domestic beneﬁt information. This

information includes the application number, the

ﬁling date, the status (including patent number if

available), and relationship of each application for

which a beneﬁt is claimed under 35 U.S.C. 119(e),

120, 121, 365(c), or 386(c). Providing this

information in the application data sheet constitutes

the speciﬁc reference required by 35 U.S.C. 119(e)

or 120 and § 1.78.

(6) Foreign priority information. This

information includes the application number,

country (or intellectual property authority), and

ﬁling date of each foreign application for which

priority is claimed. Providing this information in

the application data sheet constitutes the claim for

priority as required by 35 U.S.C. 119(b) and § 1.55.

(7) Applicant information: This information

includes the name (either natural person or juristic

entity) and address of the legal representative,

assignee, person to whom the inventor is under an

obligation to assign the invention, or person who

otherwise shows sufﬁcient proprietary interest in

the matter who is the applicant under § 1.43 or §

1.46. Providing assignment information in the

application data sheet does not substitute for

compliance with any requirement of part 3 of this

chapter to have an assignment recorded by the

Ofﬁce.

data sheet.

(1) Information in a previously submitted

application data sheet, inventor’s oath or declaration

under § 1.63, § 1.64 or § 1.67, or otherwise of

record, may be corrected or updated until payment

of the issue fee by a new application data sheet

providing corrected or updated information, except

that inventorship changes must comply with the

requirements of § 1.48, foreign priority and domestic

beneﬁt information changes must comply with §§

1.55 and 1.78, and correspondence address changes

are governed by § 1.33(a).

(2) An application data sheet providing

corrected or updated information may include all of

the sections listed in paragraph (b) of this section

or only those sections containing changed or updated

information. The application data sheet must include

the section headings listed in paragraph (b) of this

section for each section included in the application

data sheet, and must identify the information that is

being changed, with underlining for insertions, and

strike-through or brackets for text removed, except

that identiﬁcation of information being changed is

not required for an application data sheet included

with an initial submission under 35 U.S.C. 371.

(d) Inconsistencies between application data

sheet and other documents. For inconsistencies

between information that is supplied by both an

application data sheet under this section and other

documents:

(1) The most recent submission will govern

with respect to inconsistencies as between the

information provided in an application data sheet,

January 2018R-99

§ 1.76CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

a designation of a correspondence address, or by

the inventor’s oath or declaration, except that:

(i) The most recent application data sheet

will govern with respect to foreign priority (§ 1.55

) or domestic beneﬁt (§ 1.78 ) claims; and

(ii) The naming of the inventorship is

governed by § 1.41 and changes to inventorship or

the names of the inventors is governed by § 1.48.

(2) The information in the application data

sheet will govern when inconsistent with the

information supplied at the same time by a

designation of correspondence address or the

inventor’s oath or declaration. The information in

the application data sheet will govern when

inconsistent with the information supplied at any

time in a Patent Cooperation Treaty Request Form,

Patent Law Treaty Model International Request

Form, Patent Law Treaty Model International

Request for Recordation of Change in Name or

Address Form, or Patent Law Treaty Model

International Request for Recordation of Change in

Applicant or Owner Form.

(3) The Ofﬁce will capture bibliographic

information from the application data sheet. The

Ofﬁce will generally not review the inventor’s oath

or declaration to determine if the bibliographic

information contained therein is consistent with the

bibliographic information provided in an application

data sheet. Incorrect bibliographic information

contained in an application data sheet may be

corrected as provided in paragraph (c)(1) of this

section.

(e) Signature requirement. An application data

sheet must be signed in compliance with § 1.33(b).

An unsigned application data sheet will be treated

only as a transmittal letter.

(f) Patent Law Treaty Model International

Forms. The requirement in § 1.55 or § 1.78 for the

presentation of a priority or beneﬁt claim under 35

U.S.C. 119, 120, 121, or 365 in an application data

sheet will be satisﬁed by the presentation of such

priority or beneﬁt claim in the Patent Law Treaty

Model International Request Form, and the

requirement in § 1.57(a) for a reference to the

previously ﬁled application in an application data

sheet will be satisﬁed by the presentation of such

reference to the previously ﬁled application in the

Patent Law Treaty Model International Request

Form. The requirement in § 1.46 for the presentation

of the name of the applicant under 35 U.S.C. 118

in an application data sheet will be satisﬁed by the

presentation of the name of the applicant in the

Patent Law Treaty Model International Request

Form, Patent Law Treaty Model International

Request for Recordation of Change in Name or

Address Form, or Patent Law Treaty Model

International Request for Recordation of Change in

Applicant or Owner Form, as applicable.

(g) Patent Cooperation Treaty Request Form.

The requirement in § 1.78 for the presentation of a

beneﬁt claim under 35 U.S.C. 119, 120, 121, or 365

in an application data sheet will be satisﬁed in a

national stage application under 35 U.S.C. 371 by

the presentation of such beneﬁt claim in the Patent

Cooperation Treaty Request Form contained in the

international application or the presence of such

beneﬁt claim on the front page of the publication of

the international application under PCT Article

21(2). The requirement in § 1.55 or § 1.78 for the

presentation of a priority or beneﬁt claim under 35

U.S.C. 119, 120, 121, or 365 in an application data

sheet and the requirement in § 1.46 for the

presentation of the name of the applicant under 35

U.S.C. 118 in an application data sheet will be

satisﬁed in an application under 35 U.S.C. 111 by

the presentation of such priority or beneﬁt claim

and presentation of the name of the applicant in a

Patent Cooperation Treaty Request Form. If a Patent

Cooperation Treaty Request Form is submitted in

an application under 35 U.S.C. 111, the Patent

Cooperation Treaty Request Form must be

accompanied by a clear indication that treatment of

the application as an application under 35 U.S.C.

111 is desired.

[Added, 65 FR 54604, Sept. 8, 2000, effective Nov.

7, 2000; para. (b)(7) added, 65 FR 57024, Sept. 20, 2000,

effective Nov. 29, 2000; paras. (a), (b)(4), (c)(2) and (d)

revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21,

2004; para. (b)(5) revised, 70 FR 54259, Sept. 14, 2005,

effective Sept. 14, 2005; para. (b)(5) revised, 72 FR

46716, Aug. 21, 2007 (implementation enjoined and

never became effective); para. (b)(5) revised, 74 FR

52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove

changes made by the ﬁnal rules in 72 FR 46716 from the

CFR); paras. (a), (b)(1), (b)(3), (b)(5), (b)(7), (c), and (d)

revised and para. (e) added, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012; paras. (b)(5) and (b)(6) revised,

78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013;

para. (b)(3) and (d)(2) revised, paras. (f) and (g) added,

78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013;

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.76

paras. (a), (b)(5), and (b)(6) revised, 80 FR 17918, Apr.

2, 2015, effective May 13, 2015]

[*Paragraphs (a), (b)(1), (b)(3), (b)(5), (b)(6),

(b)(7), (c), (d) and (e) above include changes having

limited applicability as follows:

The changes to para. 1.76(b)(3) effective Dec. 18,

2013 are applicable only to patent applications ﬁled under

35 U.S.C. 111 on or after Dec. 18, 2013. For para. (b)(3)

applicable to applications ﬁled on or after Sept. 16, 2012

and before Dec. 18, 2013, see § 1.76 (2012-09-16 thru

2013-12-17). For para. (b)(3) applicable to applications

ﬁled before Sept. 16, 2012, see § 1.76 (pre-AIA). The

changes to paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c),

(d), and (e) effective Sept. 16, 2012 and/or May 13, 2015

are applicable only to patent applications ﬁled on or after

Sept. 16, 2012. For paras. (a), (b)(1), (b)(5), (b)(6), (b)(7),

(c), and (d) in effect for applications ﬁled prior to Sept.

16, 2012, see § 1.76 (pre-AIA).]

§ 1.76 (2012-09-16 thru 2013-12-17)

Application data sheet.

[Editor Note: Para. (b)(3) below is applicable to

applications ﬁled on or after September 16, 2012 and

before December 18, 2013*]

*****

(b) *****

(3) Application information. This

information includes the title of the invention, the

total number of drawing sheets, a suggested drawing

ﬁgure for publication (in a nonprovisional

application), any docket number assigned to the

application, the type of application (e.g., utility,

plant, design, reissue, provisional), whether the

application discloses any signiﬁcant part of the

subject matter of an application under a secrecy

order pursuant to § 5.2 of this chapter (see § 5.2(c)),

and, for plant applications, the Latin name of the

genus and species of the plant claimed, as well as

the variety denomination.

*****

Para. (b)(3) above includes changes applicable to

any application ﬁled under 35 U.S.C. 111 or 363 on or

after Sept. 16, 2012 and before Mar. 16, 2013. For para.

(b)(3) applicable to applications ﬁled on or after Mar.

16, 2013, see § 1.76. For para. (b)(3) applicable to

applications ﬁled before Sept. 16, 2012, see § 1.76

(pre-AIA).

§ 1.76 (pre-AIA) Application data sheet.

[Editor Note: Paras. (a), (b)(1), (b)(3), (b)(5),

(b)(7), (c) and (d) below are applicable to patent

applications ﬁled under 35 U.S.C. 111(a) or 363 before

September 16, 2012.]

(a) Application data sheet. An application data

sheet is a sheet or sheets, that may be voluntarily

submitted in either provisional or nonprovisional

applications, which contains bibliographic data,

arranged in a format speciﬁed by the Ofﬁce. An

application data sheet must be titled “Application

Data Sheet” and must contain all of the section

headings listed in paragraph (b) of this section, with

any appropriate data for each section heading. If an

application data sheet is provided, the application

data sheet is part of the provisional or

nonprovisional application for which it has been

submitted.

(b) Bibliographic data. Bibliographic data as

used in paragraph (a) of this section includes:

(1) Applicant information. This information

includes the name, residence, mailing address, and

citizenship of each applicant (§ 1.41(b)). The name

of each applicant must include the family name, and

at least one given name without abbreviation

together with any other given name or initial. If the

applicant is not an inventor, this information also

includes the applicant’s authority (§§ 1.42, 1.43,

and 1.47) to apply for the patent on behalf of the

inventor.

*****

(3) Application information. This

information includes the title of the invention, a

suggested classiﬁcation, by class and subclass, the

Technology Center to which the subject matter of

the invention is assigned, the total number of

drawing sheets, a suggested drawing ﬁgure for

publication (in a nonprovisional application), any

docket number assigned to the application, the type

of application (e.g., utility, plant, design, reissue,

provisional), whether the application discloses any

signiﬁcant part of the subject matter of an

application under a secrecy order pursuant to § 5.2

of this chapter (see § 5.2(c)), and, for plant

applications, the Latin name of the genus and species

of the plant claimed, as well as the variety

denomination. The suggested classiﬁcation and

Technology Center information should be supplied

January 2018R-101

§ 1.76

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

for provisional applications whether or not claims

are present. If claims are not present in a provisional

application, the suggested classiﬁcation and

Technology Center should be based upon the

disclosure.

*****

(5) Domestic priority information. This

information includes the application number, the

ﬁling date, the status (including patent number if

available), and relationship of each application for

which a beneﬁt is claimed under 35 U.S.C. 119(e),

120, 121, or 365(c). Providing this information in

the application data sheet constitutes the speciﬁc

reference required by 35 U.S.C. 119(e) or 120, and

§ 1.78(a)(2) or § 1.78(a)(5), and need not otherwise

be made part of the speciﬁcation.

(6) Foreign priority information. This

information includes the application number,

country, and ﬁling date of each foreign application

for which priority is claimed. Providing this

information in the application data sheet constitutes

the claim for priority as required by 35 U.S.C.

119(b) and § 1.55.

(7) Assignee information. This information

includes the name (either person or juristic entity)

and address of the assignee of the entire right, title,

and interest in an application. Providing this

information in the application data sheet does not

substitute for compliance with any requirement of

part 3 of this chapter to have an assignment recorded

by the Ofﬁce.

Supplemental application data sheets:

(1) May be subsequently supplied prior to

payment of the issue fee either to correct or update

information in a previously submitted application

data sheet, or an oath or declaration under § 1.63 or

§ 1.67, except that inventorship changes are

governed by § 1.48, correspondence changes are

governed by § 1.33(a), and citizenship changes are

governed by § 1.63 or § 1.67; and

(2) Must be titled “Supplemental Application

Data Sheet,” include all of the section headings

listed in paragraph (b) of this section, include all

appropriate data for each section heading, and must

identify the information that is being changed,

preferably with underlining for insertions, and

strike-through or brackets for text removed.

(d) Inconsistencies between application data

sheet and other documents. For inconsistencies

between information that is supplied by both an

application data sheet under this section and other

documents.

(1) The latest submitted information will

govern notwithstanding whether supplied by an

application data sheet, an amendment to the

speciﬁcation, a designation of a correspondence

address, or by a § 1.63 or § 1.67 oath or declaration,

except as provided by paragraph (d)(3) of this

section;

(2) The information in the application data

sheet will govern when inconsistent with the

information supplied at the same time by a

designation of correspondence address or the

inventor’s oath or declaration. The information in

the application data sheet will govern when

inconsistent with the information supplied at any

time in a Patent Cooperation Treaty Request Form,

Patent Law Treaty Model International Request

Form, Patent Law Treaty Model International

Request for Recordation of Change in Name or

Address Form, or Patent Law Treaty Model

International Request for Recordation of Change in

Applicant or Owner Form.

(3) The oath or declaration under § 1.63 or

§ 1.67 governs inconsistencies with the application

data sheet in the naming of inventors (§ 1.41(a)(1)

) and setting forth their citizenship (35 U.S.C. 115);

(4) The Ofﬁce will capture bibliographic

information from the application data sheet

(notwithstanding whether an oath or declaration

governs the information). Thus, the Ofﬁce shall

generally, for example, not look to an oath or

declaration under § 1.63 to see if the bibliographic

information contained therein is consistent with the

bibliographic information captured from an

application data sheet (whether the oath or

declaration is submitted prior to or subsequent to

the application data sheet). Captured bibliographic

information derived from an application data sheet

containing errors may be corrected if applicant

submits a request therefor and a supplemental

application data sheet.

[* Paras. (a), (b)(1), (b)(5), (b)(6), (b)(7), (c), and

(d) above are applicable to applications ﬁled before Sept.

16, 2012. For the current rule, including paras. (a), (b)(1),

(b)(5), (b)(6), (b)(7), (c), and (d) applicable to

applications ﬁled on or after Sept. 16, 2012, see § 1.76.]

R-102January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.76 (pre-AIA)

§ 1.77 Arrangement of application elements.

(a) The elements of the application, if

applicable, should appear in the following order:

(1) Utility application transmittal form.

(2) Fee transmittal form.

(3) Application data sheet (see § 1.76).

(4) Speciﬁcation.

(5) Drawings.

(6) The inventor’s oath or declaration.

(b) The speciﬁcation should include the

following sections in order:

(1) Title of the invention, which may be

accompanied by an introductory portion stating the

name, citizenship, and residence of the applicant

(unless included in the application data sheet).

(2) Cross-reference to related applications.

(3) Statement regarding federally sponsored

research or development.

(4) The names of the parties to a joint

research agreement.

(5) Reference to a “Sequence Listing,” a

table, or a computer program listing appendix

submitted on a compact disc and an

incorporation-by-reference of the material on the

compact disc (see § 1.52(e)(5)). The total number

of compact discs including duplicates and the ﬁles

on each compact disc shall be speciﬁed.

(6) Statement regarding prior disclosures by

the inventor or a joint inventor.

(7) Background of the invention.

(8) Brief summary of the invention.

(9) Brief description of the several views of

the drawing.

(10) Detailed description of the invention.

(11) A claim or claims.

(12) Abstract of the disclosure.

(13) “Sequence Listing,” if on paper (see §§

1.821 through 1.825).

in paragraphs (b)(1) through (b)(12) of this section,

if applicable, should be preceded by a section

heading in uppercase and without underlining or

bold type.

[43 FR 20464, May 11, 1978; 46 FR 2612, Jan.

12, 1981; paras. (h) and (i), 48 FR 2712, Jan. 20, 1983,

effective Feb. 27, 1983; revised, 61 FR 42790, Aug. 19,

1996, effective Sept. 23, 1996; revised, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000; paras. (b) and (c)

revised, 70 FR 1818, Jan. 11, 2005, effective Dec. 10,

2004; para. (a)(6) revised, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012; para. (b)(2) revised, (b)(6)-(12)

redesignated as (b)(7)-(13), and para. (b)(6) added, 78

FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]

§ 1.78 Claiming beneﬁt of earlier ﬁling date

and cross-references to other applications.

(a) Claims under 35 U.S.C. 119(e) for the

beneﬁt of a prior-ﬁled provisional application. An

applicant in a nonprovisional application, other than

for a design patent, or an international application

designating the United States may claim the beneﬁt

of one or more prior-ﬁled provisional applications

under the conditions set forth in 35 U.S.C. 119(e)

and this section.

(1) The nonprovisional application or

international application designating the United

States must be:

(i) Filed not later than twelve months

after the date on which the provisional application

was ﬁled, subject to paragraph (b) of this section (a

subsequent application); or

(ii) Entitled to claim the beneﬁt under 35

U.S.C. 120, 121, or 365(c) of a subsequent

application that was ﬁled within the period set forth

in paragraph (a)(1)(i) of this section.

(2) Each prior-ﬁled provisional application

must name the inventor or a joint inventor named

in the later-ﬁled application as the inventor or a joint

inventor. In addition, each prior-ﬁled provisional

application must be entitled to a ﬁling date as set

forth in § 1.53(c), and the basic ﬁling fee set forth

in § 1.16(d) must have been paid for such

provisional application within the time period set

forth in § 1.53(g).

(3) Any nonprovisional application or

international application designating the United

States that claims the beneﬁt of one or more

prior-ﬁled provisional applications must contain, or

be amended to contain, a reference to each such

prior-ﬁled provisional application, identifying it by

January 2018R-103

§ 1.78CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

the provisional application number (consisting of

series code and serial number). If the later-ﬁled

application is a nonprovisional application, the

reference required by this paragraph must be

included in an application data sheet (§ 1.76(b)(5)).

(4) The reference required by paragraph

(a)(3) of this section must be submitted during the

pendency of the later-ﬁled application. If the

later-ﬁled application is an application ﬁled under

35 U.S.C. 111(a), this reference must also be

submitted within the later of four months from the

actual ﬁling date of the later-ﬁled application or

sixteen months from the ﬁling date of the prior-ﬁled

provisional application. If the later-ﬁled application

is a nonprovisional application entering the national

stage from an international application under 35

U.S.C. 371, this reference must also be submitted

within the later of four months from the date on

which the national stage commenced under 35

U.S.C. 371(b) or (f) (§ 1.491(a)), four months from

the date of the initial submission under 35 U.S.C.

371 to enter the national stage, or sixteen months

from the ﬁling date of the prior-ﬁled provisional

application. Except as provided in paragraph (c) of

this section, failure to timely submit the reference

is considered a waiver of any beneﬁt under 35

U.S.C. 119(e) of the prior-ﬁled provisional

application. The time periods in this paragraph do

not apply if the later-ﬁled application is:

(i) An application ﬁled under 35 U.S.C.

111(a) before November 29, 2000; or

(ii) An international application ﬁled

under 35 U.S.C. 363 before November 29, 2000.

(5) If the prior-ﬁled provisional application

was ﬁled in a language other than English and both

an English-language translation of the prior-ﬁled

provisional application and a statement that the

translation is accurate were not previously ﬁled in

the prior-ﬁled provisional application, the applicant

will be notiﬁed and given a period of time within

which to ﬁle, in the prior-ﬁled provisional

application, the translation and the statement. If the

notice is mailed in a pending nonprovisional

application, a timely reply to such a notice must

include the ﬁling in the nonprovisional application

of either a conﬁrmation that the translation and

statement were ﬁled in the provisional application,

or an application data sheet (§ 1.76(b)(5))

eliminating the reference under paragraph (a)(3) of

this section to the prior-ﬁled provisional application,

or the nonprovisional application will be abandoned.

The translation and statement may be ﬁled in the

provisional application, even if the provisional

application has become abandoned.

(6) If a nonprovisional application ﬁled on

or after March 16, 2013, claims the beneﬁt of the

ﬁling date of a provisional application ﬁled prior to

March 16, 2013, and also contains, or contained at

any time, a claim to a claimed invention that has an

effective ﬁling date as deﬁned in § 1.109 that is on

or after March 16, 2013, the applicant must provide

a statement to that effect within the later of four

months from the actual ﬁling date of the

nonprovisional application, four months from the

date of entry into the national stage as set forth in §

1.491 in an international application, sixteen months

from the ﬁling date of the prior-ﬁled provisional

application, or the date that a ﬁrst claim to a claimed

invention that has an effective ﬁling date on or after

March 16, 2013, is presented in the nonprovisional

application. An applicant is not required to provide

such a statement if the applicant reasonably believes

on the basis of information already known to the

individuals designated in § 1.56(c) that the

nonprovisional application does not, and did not at

any time, contain a claim to a claimed invention that

has an effective ﬁling date on or after March 16,

2013.

(b) Delayed ﬁling of the subsequent

nonprovisional application or international

application designating the United States. If the

subsequent nonprovisional application or

international application designating the United

States has a ﬁling date which is after the expiration

of the twelve-month period set forth in paragraph

(a)(1)(i) of this section but within two months from

the expiration of the period set forth in paragraph

(a)(1)(i) of this section, the beneﬁt of the provisional

application may be restored under PCT Rule 26 bis.3

for an international application, or upon petition

pursuant to this paragraph, if the delay in ﬁling the

subsequent nonprovisional application or

international application designating the United

States within the period set forth in paragraph

(a)(1)(i) of this section was unintentional.

(1) A petition to restore the beneﬁt of a

provisional application under this paragraph ﬁled

on or after May 13, 2015, must be ﬁled in the

subsequent application, and any petition to restore

R-104January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.78

the beneﬁt of a provisional application under this

paragraph must include:

(i) The reference required by 35 U.S.C.

119(e) to the prior-ﬁled provisional application in

an application data sheet (§ 1.76(b)(5)) identifying

it by provisional application number (consisting of

series code and serial number), unless previously

submitted;

(ii) The petition fee as set forth in §

1.17(m); and

(iii) A statement that the delay in ﬁling

the subsequent nonprovisional application or

international application designating the United

States within the twelve-month period set forth in

paragraph (a)(1)(i) of this section was unintentional.

The Director may require additional information

where there is a question whether the delay was

unintentional.

(2) The restoration of the right of priority

under PCT Rule 26 bis.3 to a provisional application

does not affect the requirement to include the

reference required by paragraph (a)(3) of this section

to the provisional application in a national stage

application under 35 U.S.C. 371 within the time

period provided by paragraph (a)(4) of this section

to avoid the beneﬁt claim being considered waived.

the beneﬁt of a prior-ﬁled provisional application.

If the reference required by 35 U.S.C. 119(e) and

paragraph (a)(3) of this section is presented in an

application after the time period provided by

paragraph (a)(4) of this section, the claim under 35

U.S.C. 119(e) for the beneﬁt of a prior-ﬁled

provisional application may be accepted if the

reference identifying the prior-ﬁled application by

provisional application number was unintentionally

delayed. A petition to accept an unintentionally

delayed claim under 35 U.S.C. 119(e) for the beneﬁt

of a prior-ﬁled provisional application must be

accompanied by:

(1) The reference required by 35 U.S.C.

119(e) and paragraph (a)(3) of this section to the

prior-ﬁled provisional application, unless previously

submitted;

(2) The petition fee as set forth in § 1.17(m);

and

(3) A statement that the entire delay between

the date the beneﬁt claim was due under paragraph

(a)(4) of this section and the date the beneﬁt claim

was ﬁled was unintentional. The Director may

require additional information where there is a

question whether the delay was unintentional.

(d) Claims under 35 U.S.C. 120, 121, 365(c),

or 386(c) for the beneﬁt of a prior-ﬁled

nonprovisional application, international

application, or international design application. An

applicant in a nonprovisional application (including

a nonprovisional application resulting from an

international application or international design

application), an international application designating

the United States, or an international design

application designating the United States may claim

the beneﬁt of one or more prior-ﬁled copending

nonprovisional applications, international

applications designating the United States, or

international design applications designating the

United States under the conditions set forth in 35

U.S.C. 120, 121, 365(c), or 386(c) and this section.

(1) Each prior-ﬁled application must name

the inventor or a joint inventor named in the

later-ﬁled application as the inventor or a joint

inventor. In addition, each prior-ﬁled application

must either be:

(i) An international application entitled

to a ﬁling date in accordance with PCT Article 11

and designating the United States;

(ii) An international design application

entitled to a ﬁling date in accordance with § 1.1023

and designating the United States; or

(iii) A nonprovisional application under

35 U.S.C. 111(a) that is entitled to a ﬁling date as

set forth in § 1.53(b) or (d) for which the basic ﬁling

fee set forth in § 1.16 has been paid within the

pendency of the application.

(2) Except for a continued prosecution

application ﬁled under § 1.53(d), any nonprovisional

application, international application designating

the United States, or international design application

designating the United States that claims the beneﬁt

of one or more prior-ﬁled nonprovisional

applications, international applications designating

the United States, or international design

applications designating the United States must

contain or be amended to contain a reference to each

such prior-ﬁled application, identifying it by

application number (consisting of the series code

and serial number), international application number

January 2018R-105

§ 1.78CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

and international ﬁling date, or international

registration number and ﬁling date under § 1.1023.

If the later-ﬁled application is a nonprovisional

application, the reference required by this paragraph

must be included in an application data sheet (§

1.76(b)(5)). The reference also must identify the

relationship of the applications, namely, whether

the later-ﬁled application is a continuation,

divisional, or continuation-in-part of the prior-ﬁled

nonprovisional application, international application,

or international design application.

(3)

(i) The reference required by 35 U.S.C.

120 and paragraph (d)(2) of this section must be

submitted during the pendency of the later-ﬁled

application.

(ii) If the later-ﬁled application is an

application ﬁled under 35 U.S.C. 111(a), this

reference must also be submitted within the later of

four months from the actual ﬁling date of the

later-ﬁled application or sixteen months from the

ﬁling date of the prior-ﬁled application. If the

later-ﬁled application is a nonprovisional application

entering the national stage from an international

application under 35 U.S.C. 371, this reference must

also be submitted within the later of four months

from the date on which the national stage

commenced under 35 U.S.C. 371(b) or (f) (§

1.491(a)), four months from the date of the initial

submission under 35 U.S.C. 371 to enter the national

stage, or sixteen months from the ﬁling date of the

prior-ﬁled application. The time periods in this

paragraph do not apply if the later-ﬁled application

is:

(A) An application for a design

patent;

(B) An application ﬁled under 35

U.S.C. 111(a) before November 29, 2000; or

under 35 U.S.C. 363 before November 29, 2000.

(iii) Except as provided in paragraph (e)

of this section, failure to timely submit the reference

required by 35 U.S.C. 120 and paragraph (d)(2) of

this section is considered a waiver of any beneﬁt

under 35 U.S.C. 120, 121, 365(c), or 386(c) to the

prior-ﬁled application.

(4) The request for a continued prosecution

application under § 1.53(d) is the speciﬁc reference

required by 35 U.S.C. 120 to the prior-ﬁled

application. The identiﬁcation of an application by

application number under this section is the

identiﬁcation of every application assigned that

application number necessary for a speciﬁc

reference required by 35 U.S.C. 120 to every such

application assigned that application number.

(5) Cross-references to other related

applications may be made when appropriate (see §

1.14), but cross-references to applications for which

a beneﬁt is not claimed under title 35, United States

Code, must not be included in an application data

sheet (§ 1.76(b)(5)).

(6) If a nonprovisional application ﬁled on

or after March 16, 2013, other than a nonprovisional

international design application, claims the beneﬁt

of the ﬁling date of a nonprovisional application or

an international application designating the United

States ﬁled prior to March 16, 2013, and also

contains, or contained at any time, a claim to a

claimed invention that has an effective ﬁling date

as deﬁned in § 1.109 that is on or after March 16,

2013, the applicant must provide a statement to that

effect within the later of four months from the actual

ﬁling date of the later-ﬁled application, four months

from the date of entry into the national stage as set

forth in § 1.491 in an international application,

sixteen months from the ﬁling date of the prior-ﬁled

application, or the date that a ﬁrst claim to a claimed

invention that has an effective ﬁling date on or after

March 16, 2013, is presented in the later-ﬁled

application. An applicant is not required to provide

such a statement if either:

(i) The application claims the beneﬁt of

a nonprovisional application in which a statement

under § 1.55(k), paragraph (a)(6) of this section, or

this paragraph that the application contains, or

contained at any time, a claim to a claimed invention

that has an effective ﬁling date on or after March

16, 2013 has been ﬁled; or

(ii) The applicant reasonably believes on

the basis of information already known to the

individuals designated in § 1.56(c) that the later ﬁled

application does not, and did not at any time, contain

a claim to a claimed invention that has an effective

ﬁling date on or after March 16, 2013.

(7) Where beneﬁt is claimed under 35 U.S.C.

120, 121, 365(c), or 386(c) to an international

application or an international design application

R-106January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.78

which designates but did not originate in the United

States, the Ofﬁce may require a certiﬁed copy of

such application together with an English translation

thereof if ﬁled in another language.

(e) Delayed claims under 35 U.S.C. 120, 121,

365(c), or 386(c) for the beneﬁt of a prior-ﬁled

nonprovisional application, international

application, or international design application. If

the reference required by 35 U.S.C. 120 and

paragraph (d)(2) of this section is presented after

the time period provided by paragraph (d)(3) of this

section, the claim under 35 U.S.C. 120, 121, 365(c),

or 386(c) for the beneﬁt of a prior-ﬁled copending

nonprovisional application, international application

designating the United States, or international design

application designating the United States may be

accepted if the reference required by paragraph

(d)(2) of this section was unintentionally delayed.

A petition to accept an unintentionally delayed claim

under 35 U.S.C. 120, 121 , 365(c), or 386(c) for the

beneﬁt of a prior-ﬁled application must be

accompanied by:

(1) The reference required by 35 U.S.C. 120

and paragraph (d)(2) of this section to the prior-ﬁled

application, unless previously submitted;

(2) The petition fee as set forth in § 1.17(m);

and

(3) A statement that the entire delay between

the date the beneﬁt claim was due under paragraph

(d)(3) of this section and the date the beneﬁt claim

was ﬁled was unintentional. The Director may

require additional information where there is a

question whether the delay was unintentional.

(f) Applications containing patentably indistinct

claims. Where two or more applications ﬁled by the

same applicant or assignee contain patentably

indistinct claims, elimination of such claims from

all but one application may be required in the

absence of good and sufﬁcient reason for their

retention during pendency in more than one

application.

(g) Applications or patents under reexamination

naming different inventors and containing

patentably indistinct claims. If an application or a

patent under reexamination and at least one other

application naming different inventors are owned

by the same person and contain patentably indistinct

claims, and there is no statement of record indicating

that the claimed inventions were commonly owned

or subject to an obligation of assignment to the same

person on the effective ﬁling date (as deﬁned in §

1.109), or on the date of the invention, as applicable,

of the later claimed invention, the Ofﬁce may

require the applicant or assignee to state whether

the claimed inventions were commonly owned or

subject to an obligation of assignment to the same

person on such date, and if not, indicate which

named inventor is the prior inventor, as applicable.

Even if the claimed inventions were commonly

owned, or subject to an obligation of assignment to

the same person on the effective ﬁling date (as

deﬁned in § 1.109), or on the date of the invention,

as applicable, of the later claimed invention, the

patentably indistinct claims may be rejected under

the doctrine of double patenting in view of such

commonly owned or assigned applications or patents

under reexamination.

(h) Applications ﬁled before September 16,

2012. Notwithstanding the requirement in

paragraphs (a)(3) and (d)(2) of this section that any

speciﬁc reference to a prior-ﬁled application be

presented in an application data sheet (§ 1.76), this

requirement in paragraph (a)(3) and (d)(2) of this

section will be satisﬁed by the presentation of such

speciﬁc reference in the ﬁrst sentence(s) of the

speciﬁcation following the title in a nonprovisional

application ﬁled under 35 U.S.C. 111(a) before

September 16, 2012, or resulting from an

international application ﬁled under 35 U.S.C. 363

before September 16, 2012. The provisions of this

paragraph do not apply to any speciﬁc reference

submitted for a petition under paragraph (b) of this

section to restore the beneﬁt of a provisional

application.

(i) Petitions required in international

applications. If a petition under paragraph (b), (c),

or (e) of this section is required in an international

application that was not ﬁled with the United States

Receiving Ofﬁce and is not a nonprovisional

application, then such petition may be ﬁled in the

earliest nonprovisional application that claims

beneﬁt under 35 U.S.C. 120, 121, 365(c), or 386(c)

to the international application and will be treated

as having been ﬁled in the international application.

(j) Beneﬁt under 35 U.S.C. 386(c). Beneﬁt

under 35 U.S.C. 386(c) with respect to an

international design application is applicable only

to nonprovisional applications, international

applications, and international design applications

January 2018R-107

§ 1.78CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

ﬁled on or after May 13, 2015, and patents issuing

thereon.

(k) Time periods in this section. The time

periods set forth in this section are not extendable,

but are subject to 35 U.S.C. 21(b) (and § 1.7(a)),

PCT Rule 80.5, and Hague Agreement Rule 4(4).

[36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4,

1984; paras. (a), (c) & (d), 50 FR 9380, Mar. 7, 1985,

effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; para.

(a) revised 58 FR 54504, Oct. 22, 1993, effective Jan. 3,

1994; paras. (a)(1) and (a)(2) revised and paras. (a)(3)

and (a)(4) added, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; para. (c) revised and para. (d) deleted, 61

FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para.

(a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997; para. (a)(3) revised, 65 FR 14865, Mar. 20, 2000,

effective May 29, 2000 (adopted as ﬁnal, 65 FR 50092,

Aug. 16, 2000); paras. (a)(2), (a)(4), and (c) revised, 65

FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; paras.

(a)(2), (a)(3), and (a)(4) revised and paras. (a)(5) and

(a)(6) added, 65 FR 57024, Sept. 20, 2000, effective Nov.

29, 2000; para. (a) revised, 66 FR 67087, Dec. 28, 2001,

effective Dec. 28, 2001; paras. (a)(3)(iii) & (a)(6)(iii)

revised, 68 FR 14332, Mar. 25, 2003, effective May 1,

2003; para (a)(3) revised, 68 FR 70996, Dec. 22, 2003,

effective Jan. 21, 2004; paras. (a)(1), (a)(2)(iii), (a)(5)(iii)

and (c) revised, 69 FR 56481, Sept. 21, 2004, effective

Sept. 21, 2004; para. (a)(4) revised, 70 FR 3880, Jan. 27,

2005, effective Dec. 8, 2004; para.(a)(1)(iii) removed

and para. (a)(1)(ii) revised, 70 FR 30360, May 26, 2005,

effective July 1, 2005; para. (a)(5)(iv) revised, 70 FR

56119, Sept. 26, 2005, effective Nov. 25, 2005; revised,

72 FR 46716, Aug. 21, 2007 (implementation enjoined

and never became effective); revised, 74 FR 52686, Oct.

14, 2009, effective Oct. 14, 2009 (to remove changes

made by the ﬁnal rules in 72 FR 46716 from the CFR);

paras. (a)(1) introductory text and (a)(4) revised, 77 FR

46615, Aug. 6, 2012, effective Sept. 16, 2012; paras.

(a)(2)(iii), (a)(5)(iii), (a)(5)(iv), and (c) revised, 77 FR

48776, Aug. 14, 2012, effective Sept. 16, 2012; revised,

78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013;

revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18,

2013; revised, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.79 Reservation clauses not permitted.

A reservation for a future application of subject

matter disclosed but not claimed in a pending

application will not be permitted in the pending

application, but an application disclosing unclaimed

subject matter may contain a reference to a later

ﬁled application of the same applicant or owned by

a common assignee disclosing and claiming that

subject matter.

THE DRAWINGS

§ 1.81 Drawings required in patent

application.

[Editor Note: Para. (a) below is applicable only to

patent applications ﬁled under 35 U.S.C. 111 on or after

December 18, 2013*]

(a) The applicant for a patent is required to

furnish a drawing of the invention where necessary

for the understanding of the subject matter sought

to be patented. Since corrections are the

responsibility of the applicant, the original

drawing(s) should be retained by the applicant for

any necessary future correction.

(b) Drawings may include illustrations which

facilitate an understanding of the invention (for

example, ﬂow sheets in cases of processes, and

diagrammatic views).

sought to be patented admits of illustration by a

drawing without its being necessary for the

understanding of the subject matter and the applicant

has not furnished such a drawing, the examiner will

require its submission within a time period of not

less than two months from the date of the sending

of a notice thereof.

(d) Drawings submitted after the ﬁling date of

the application may not be used to overcome any

insufﬁciency of the speciﬁcation due to lack of an

enabling disclosure or otherwise inadequate

disclosure therein, or to supplement the original

disclosure thereof for the purpose of interpretation

of the scope of any claim.

[43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809,

Nov. 28, 1988, effective Jan. 1, 1989; para. (a) revised,

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012;

para. (a) revised, 78 FR 62368, Oct. 21, 2013, effective

Dec. 18, 2013]

[* Para. (a) above is only applicable to applications

ﬁled under 35 U.S.C. 111 on or after Dec. 18, 2013. See

§ 1.81 (2012-09-16 thru 2013-12-17) for para. (a)

applicable to applications ﬁled under 35 U.S.C. 111(a)

or 363 on or after Sept. 16, 2012 and before Dec. 18,

2013. See § 1.81 (pre-AIA) for para. (a) applicable to

applications ﬁled before Sept. 16, 2012.]

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.79

§ 1.81 (2012-09-16 thru 2013-12-17)

Drawings required in patent application.

[Editor Note: Para. (a) below is applicable to patent

applications ﬁled on or after September 16, 2012 and

before December 18, 2013.]

(a) The applicant for a patent is required to

furnish a drawing of the invention where necessary

for the understanding of the subject matter sought

to be patented; this drawing, or a high quality copy

thereof, must be ﬁled with the application. Since

corrections are the responsibility of the applicant,

the original drawing(s) should be retained by the

applicant for any necessary future correction.

*****

[* Para. (a) above is applicable to applications ﬁled

under 35 U.S.C. 111 or 363 on or after Sept. 16, 2012

and before Dec. 18, 2013. See § 1.81 for the current rule,

including para. (a) applicable to applications ﬁled under

35 U.S.C. 111 on or after Dec. 18, 2013. See § 1.81

(pre-AIA) for para. (a) applicable to applications ﬁled

before Sept. 16, 2012.]

§ 1.81 (pre-AIA) Drawings required in

patent application.

[Editor Note: Para. (a) below is applicable to patent

applications ﬁled before September 16, 2012*]

(a) The applicant for a patent is required to

furnish a drawing of his or her invention where

necessary for the understanding of the subject matter

sought to be patented; this drawing, or a high quality

copy thereof, must be ﬁled with the application.

Since corrections are the responsibility of the

applicant, the original drawing(s) should be retained

by the applicant for any necessary future correction.

*****

[ * Para. (a) above is applicable to applications

ﬁled before Sept. 16, 2012. See § 1.81 for the current

rule including para. (a) applicable to applications ﬁled

under 35 U.S.C. 111 on or after Dec. 18, 2013. See § 1.81

(2012-09-16 thru 2013-12-17) for para. (a) applicable to

applications ﬁled under 35 U.S.C. 111(a) or 363 on or

after Sept. 16, 2012 and before Dec. 18, 2013. ]

§ 1.83 Content of drawing.

(a) The drawing in a nonprovisional application

must show every feature of the invention speciﬁed

in the claims. However, conventional features

disclosed in the description and claims, where their

detailed illustration is not essential for a proper

understanding of the invention, should be illustrated

in the drawing in the form of a graphical drawing

symbol or a labeled representation (e.g., a labeled

rectangular box). In addition, tables that are included

in the speciﬁcation and sequences that are included

in sequence listings should not be duplicated in the

drawings.

(b) When the invention consists of an

improvement on an old machine the drawing must

when possible exhibit, in one or more views, the

improved portion itself, disconnected from the old

structure, and also in another view, so much only

of the old structure as will sufﬁce to show the

connection of the invention therewith.

application do not comply with the requirements of

paragraphs (a) and (b) of this section, the examiner

shall require such additional illustration within a

time period of not less than two months from the

date of the sending of a notice thereof. Such

corrections are subject to the requirements of §

1.81(d).

[31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31,

1978; paras. (a) and (c) revised, 60 FR 20195, Apr. 25,

1995, effective June 8, 1995; para. (a) revised, 69 FR

56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a)

revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18,

2013]

§ 1.84 Standards for drawings.

(a) Drawings. There are two acceptable

categories for presenting drawings in utility and

design patent applications.

(1) Black ink. Black and white drawings are

normally required. India ink, or its equivalent that

secures solid black lines, must be used for drawings;

(2) Color. Color drawings are permitted in

design applications. Where a design application

contains color drawings, the application must

include the number of sets of color drawings

required by paragraph (a)(2)(ii) of this section and

the speciﬁcation must contain the reference required

by paragraph (a)(2)(iii) of this section. On rare

occasions, color drawings may be necessary as the

only practical medium by which to disclose the

subject matter sought to be patented in a utility

January 2018R-109

§ 1.84CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

patent application. The color drawings must be of

sufﬁcient quality such that all details in the drawings

are reproducible in black and white in the printed

patent. Color drawings are not permitted in

international applications (see PCT Rule 11.13).

The Ofﬁce will accept color drawings in utility

patent applications only after granting a petition

ﬁled under this paragraph explaining why the color

drawings are necessary. Any such petition must

include the following:

(i) The fee set forth in § 1.17(h);

(ii) One (1) set of color drawings if

submitted via the Ofﬁce electronic ﬁling system or

three (3) sets of color drawings if not submitted via

the Ofﬁce electronic ﬁling system; and

(iii) An amendment to the speciﬁcation

to insert (unless the speciﬁcation contains or has

been previously amended to contain) the following

language as the ﬁrst paragraph of the brief

description of the drawings:

The patent or application ﬁle contains at least

one drawing executed in color. Copies of this

patent or patent application publication with

color drawing(s) will be provided by the Ofﬁce

upon request and payment of the necessary fee.

(b) Photographs.—

(1) Black and white. Photographs, including

photocopies of photographs, are not ordinarily

permitted in utility and design patent applications.

The Ofﬁce will accept photographs in utility and

design patent applications, however, if photographs

are the only practicable medium for illustrating the

claimed invention. For example, photographs or

photomicrographs of: electrophoresis gels, blots

(e.g., immunological, western, Southern, and

northern), autoradiographs, cell cultures (stained

and unstained), histological tissue cross sections

(stained and unstained), animals, plants, in vivo

imaging, thin layer chromatography plates,

crystalline structures, and, in a design patent

application, ornamental effects, are acceptable. If

the subject matter of the application admits of

illustration by a drawing, the examiner may require

a drawing in place of the photograph. The

photographs must be of sufﬁcient quality so that all

details in the photographs are reproducible in the

printed patent.

(2) Color photographs. Color photographs

will be accepted in utility and design patent

applications if the conditions for accepting color

drawings and black and white photographs have

been satisﬁed. See paragraphs (a)(2) and (b)(1) of

this section.

indicia should be provided, and if provided, should

include the title of the invention, inventor’s name,

and application number, or docket number (if any)

if an application number has not been assigned to

the application. If this information is provided, it

must be placed on the front of each sheet within the

top margin. Each drawing sheet submitted after the

ﬁling date of an application must be identiﬁed as

either “Replacement Sheet” or “New Sheet”

pursuant to § 1.121(d). If a marked-up copy of any

amended drawing ﬁgure including annotations

indicating the changes made is ﬁled, such marked-up

copy must be clearly labeled as “Annotated Sheet”

pursuant to § 1.121(d)(1).

(d) Graphic forms in drawings. Chemical or

mathematical formulae, tables, and waveforms may

be submitted as drawings, and are subject to the

same requirements as drawings. Each chemical or

mathematical formula must be labeled as a separate

ﬁgure, using brackets when necessary, to show that

information is properly integrated. Each group of

waveforms must be presented as a single ﬁgure,

using a common vertical axis with time extending

along the horizontal axis. Each individual waveform

discussed in the speciﬁcation must be identiﬁed

with a separate letter designation adjacent to the

vertical axis.

(e) Type of paper. Drawings submitted to the

Ofﬁce must be made on paper which is ﬂexible,

strong, white, smooth, non-shiny, and durable. All

sheets must be reasonably free from cracks, creases,

and folds. Only one side of the sheet may be used

for the drawing. Each sheet must be reasonably free

from erasures and must be free from alterations,

overwritings, and interlineations. Photographs must

be developed on paper meeting the sheet-size

requirements of paragraph (f) of this section and the

margin requirements of paragraph (g) of this section.

See paragraph (b) of this section for other

requirements for photographs.

(f) Size of paper. All drawing sheets in an

application must be the same size. One of the shorter

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.84

sides of the sheet is regarded as its top. The size of

the sheets on which drawings are made must be:

(1) 21.0 cm. by 29.7 cm. (DIN size A4), or

(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11

inches).

(g) Margins. The sheets must not contain

frames around the sight (i.e., the usable surface),

but should have scan target points (i.e., cross-hairs)

printed on two catercorner margin corners. Each

sheet must include a top margin of at least 2.5 cm.

(1 inch), a left side margin of at least 2.5 cm. (1

inch), a right side margin of at least 1.5 cm. (5/8

inch), and a bottom margin of at least 1.0 cm. (3/8

inch), thereby leaving a sight no greater than 17.0

cm. by 26.2 cm. on 21.0 cm. by 29.7 cm. (DIN size

A4) drawing sheets, and a sight no greater than 17.6

cm. by 24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6

cm. by 27.9 cm. (8 1/2 by 11 inch) drawing sheets.

(h) Views. The drawing must contain as many

views as necessary to show the invention. The views

may be plan, elevation, section, or perspective

views. Detail views of portions of elements, on a

larger scale if necessary, may also be used. All views

of the drawing must be grouped together and

arranged on the sheet(s) without wasting space,

preferably in an upright position, clearly separated

from one another, and must not be included in the

sheets containing the speciﬁcations, claims, or

abstract. Views must not be connected by projection

lines and must not contain center lines. Waveforms

of electrical signals may be connected by dashed

lines to show the relative timing of the waveforms.

(1) Exploded views. Exploded views, with

the separated parts embraced by a bracket, to show

the relationship or order of assembly of various parts

are permissible. When an exploded view is shown

in a ﬁgure which is on the same sheet as another

ﬁgure, the exploded view should be placed in

brackets.

(2) Partial views. When necessary, a view

of a large machine or device in its entirety may be

broken into partial views on a single sheet, or

extended over several sheets if there is no loss in

facility of understanding the view. Partial views

drawn on separate sheets must always be capable

of being linked edge to edge so that no partial view

contains parts of another partial view. A smaller

scale view should be included showing the whole

formed by the partial views and indicating the

positions of the parts shown. When a portion of a

view is enlarged for magniﬁcation purposes, the

view and the enlarged view must each be labeled as

separate views.

(i) Where views on two or more sheets

form, in effect, a single complete view, the views

on the several sheets must be so arranged that the

complete ﬁgure can be assembled without

concealing any part of any of the views appearing

on the various sheets.

(ii) A very long view may be divided into

several parts placed one above the other on a single

sheet. However, the relationship between the

different parts must be clear and unambiguous.

(3) Sectional views. The plane upon which

a sectional view is taken should be indicated on the

view from which the section is cut by a broken line.

The ends of the broken line should be designated

by Arabic or Roman numerals corresponding to the

view number of the sectional view, and should have

arrows to indicate the direction of sight. Hatching

must be used to indicate section portions of an

object, and must be made by regularly spaced

oblique parallel lines spaced sufﬁciently apart to

enable the lines to be distinguished without

difﬁculty. Hatching should not impede the clear

reading of the reference characters and lead lines.

If it is not possible to place reference characters

outside the hatched area, the hatching may be broken

off wherever reference characters are inserted.

Hatching must be at a substantial angle to the

surrounding axes or principal lines, preferably 45°.

A cross section must be set out and drawn to show

all of the materials as they are shown in the view

from which the cross section was taken. The parts

in cross section must show proper material(s) by

hatching with regularly spaced parallel oblique

strokes, the space between strokes being chosen on

the basis of the total area to be hatched. The various

parts of a cross section of the same item should be

hatched in the same manner and should accurately

and graphically indicate the nature of the material(s)

that is illustrated in cross section. The hatching of

juxtaposed different elements must be angled in a

different way. In the case of large areas, hatching

may be conﬁned to an edging drawn around the

entire inside of the outline of the area to be hatched.

Different types of hatching should have different

conventional meanings as regards the nature of a

material seen in cross section.

January 2018R-111

§ 1.84CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(4) Alternate position. A moved position

may be shown by a broken line superimposed upon

a suitable view if this can be done without crowding;

otherwise, a separate view must be used for this

purpose.

(5) Modiﬁed forms. Modiﬁed forms of

construction must be shown in separate views.

(i) Arrangement of views. One view must not

be placed upon another or within the outline of

another. All views on the same sheet should stand

in the same direction and, if possible, stand so that

they can be read with the sheet held in an upright

position. If views wider than the width of the sheet

are necessary for the clearest illustration of the

invention, the sheet may be turned on its side so that

the top of the sheet, with the appropriate top margin

to be used as the heading space, is on the right-hand

side. Words must appear in a horizontal, left-to-right

fashion when the page is either upright or turned so

that the top becomes the right side, except for graphs

utilizing standard scientiﬁc convention to denote

the axis of abscissas (of X) and the axis of ordinates

(of Y).

(j) Front page view. The drawing must contain

as many views as necessary to show the invention.

One of the views should be suitable for inclusion

on the front page of the patent application

publication and patent as the illustration of the

invention. Views must not be connected by

projection lines and must not contain center lines.

Applicant may suggest a single view (by ﬁgure

number) for inclusion on the front page of the patent

application publication and patent.

(k) Scale. The scale to which a drawing is made

must be large enough to show the mechanism

without crowding when the drawing is reduced in

size to two-thirds in reproduction. Indications such

as “actual size” or “scale 1/2” on the drawings are

not permitted since these lose their meaning with

reproduction in a different format.

(l) Character of lines, numbers, and letters. All

drawings must be made by a process which will give

them satisfactory reproduction characteristics. Every

line, number, and letter must be durable, clean, black

(except for color drawings), sufﬁciently dense and

dark, and uniformly thick and well-deﬁned. The

weight of all lines and letters must be heavy enough

to permit adequate reproduction. This requirement

applies to all lines however ﬁne, to shading, and to

lines representing cut surfaces in sectional views.

Lines and strokes of different thicknesses may be

used in the same drawing where different

thicknesses have a different meaning.

(m) Shading. The use of shading in views is

encouraged if it aids in understanding the invention

and if it does not reduce legibility. Shading is used

to indicate the surface or shape of spherical,

cylindrical, and conical elements of an object. Flat

parts may also be lightly shaded. Such shading is

preferred in the case of parts shown in perspective,

but not for cross sections. See paragraph (h)(3) of

this section. Spaced lines for shading are preferred.

These lines must be thin, as few in number as

practicable, and they must contrast with the rest of

the drawings. As a substitute for shading, heavy

lines on the shade side of objects can be used except

where they superimpose on each other or obscure

reference characters. Light should come from the

upper left corner at an angle of 45°. Surface

delineations should preferably be shown by proper

shading. Solid black shading areas are not permitted,

except when used to represent bar graphs or color.

(n) Symbols. Graphical drawing symbols may

be used for conventional elements when appropriate.

The elements for which such symbols and labeled

representations are used must be adequately

identiﬁed in the speciﬁcation. Known devices should

be illustrated by symbols which have a universally

recognized conventional meaning and are generally

accepted in the art. Other symbols which are not

universally recognized may be used, subject to

approval by the Ofﬁce, if they are not likely to be

confused with existing conventional symbols, and

if they are readily identiﬁable.

(o) Legends. Suitable descriptive legends may

be used subject to approval by the Ofﬁce, or may

be required by the examiner where necessary for

understanding of the drawing. They should contain

as few words as possible.

(p) Numbers, letters, and reference characters.

(1) Reference characters (numerals are

preferred), sheet numbers, and view numbers must

be plain and legible, and must not be used in

association with brackets or inverted commas, or

enclosed within outlines, e.g., encircled. They must

be oriented in the same direction as the view so as

to avoid having to rotate the sheet. Reference

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.84

characters should be arranged to follow the proﬁle

of the object depicted.

(2) The English alphabet must be used for

letters, except where another alphabet is customarily

used, such as the Greek alphabet to indicate angles,

wavelengths, and mathematical formulas.

(3) Numbers, letters, and reference

characters must measure at least .32 cm. (1/8 inch)

in height. They should not be placed in the drawing

so as to interfere with its comprehension. Therefore,

they should not cross or mingle with the lines. They

should not be placed upon hatched or shaded

surfaces. When necessary, such as indicating a

surface or cross section, a reference character may

be underlined and a blank space may be left in the

hatching or shading where the character occurs so

that it appears distinct.

(4) The same part of an invention appearing

in more than one view of the drawing must always

be designated by the same reference character, and

the same reference character must never be used to

designate different parts.

(5) Reference characters not mentioned in

the description shall not appear in the drawings.

Reference characters mentioned in the description

must appear in the drawings.

(q) Lead lines. Lead lines are those lines

between the reference characters and the details

referred to. Such lines may be straight or curved and

should be as short as possible. They must originate

in the immediate proximity of the reference

character and extend to the feature indicated. Lead

lines must not cross each other. Lead lines are

required for each reference character except for

those which indicate the surface or cross section on

which they are placed. Such a reference character

must be underlined to make it clear that a lead line

has not been left out by mistake. Lead lines must be

executed in the same way as lines in the drawing.

See paragraph (l) of this section.

(r) Arrows. Arrows may be used at the ends of

the lines, provided that their meaning is clear, as

follows:

(1) On a lead line, a freestanding arrow to

indicate the entire section towards which it points;

(2) On a lead line, an arrow touching a line

to indicate the surface shown by the line looking

along the direction of the arrow; or

(3) To show the direction of movement.

(s) Copyright or Mask Work Notice. A

drawing, but must be placed within the sight of the

drawing immediately below the ﬁgure representing

the copyright or mask work material and be limited

to letters having a print size of .32 cm. to .64 cm.

(1/8 to 1/4 inches) high. The content of the notice

must be limited to only those elements provided for

401) and “*M* John Doe” (17 U.S.C. 909) would

be properly limited and, under current statutes,

legally sufﬁcient notices of copyright and mask

work, respectively. Inclusion of a copyright or mask

work notice will be permitted only if the

authorization language set forth in § 1.71(e) is

included at the beginning (preferably as the ﬁrst

paragraph) of the speciﬁcation.

(t) Numbering of sheets of drawings. The sheets

of drawings should be numbered in consecutive

Arabic numerals, starting with 1, within the sight

as deﬁned in paragraph (g) of this section. These

numbers, if present, must be placed in the middle

of the top of the sheet, but not in the margin. The

numbers can be placed on the right-hand side if the

drawing extends too close to the middle of the top

edge of the usable surface. The drawing sheet

numbering must be clear and larger than the

numbers used as reference characters to avoid

confusion. The number of each sheet should be

shown by two Arabic numerals placed on either side

of an oblique line, with the ﬁrst being the sheet

number and the second being the total number of

sheets of drawings, with no other marking.

(u) Numbering of views.

(1) The different views must be numbered

in consecutive Arabic numerals, starting with 1,

independent of the numbering of the sheets and, if

possible, in the order in which they appear on the

drawing sheet(s). Partial views intended to form one

complete view, on one or several sheets, must be

identiﬁed by the same number followed by a capital

letter. View numbers must be preceded by the

abbreviation “FIG.” Where only a single view is

used in an application to illustrate the claimed

invention, it must not be numbered and the

abbreviation “FIG.” must not appear.

(2) Numbers and letters identifying the views

must be simple and clear and must not be used in

January 2018R-113

§ 1.84CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

association with brackets, circles, or inverted

commas. The view numbers must be larger than the

numbers used for reference characters.

(v) Security markings. Authorized security

markings may be placed on the drawings provided

they are outside the sight, preferably centered in the

top margin.

(w) Corrections. Any corrections on drawings

submitted to the Ofﬁce must be durable and

permanent.

(x) Holes. No holes should be made by

applicant in the drawing sheets.

(y) Types of drawings. See § 1.152 for design

drawings, § 1.1026 for international design

reproductions, § 1.165 for plant drawings, and §

1.173(a)(2) for reissue drawings.

[24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct.

4, 1966; 36 FR 9775, May 28, 1971; 43 FR 20464, May

11, 1978; 45 FR 73657, Nov. 6,1980; paras. (a), (b), (i),

(j), and (l) amended, paras. (n), (o), and (p) added, 53 FR

47809, Nov. 28, 1988, effective Jan. 1, 1989; revised, 58

FR 38719, July 20, 1993, effective Oct. 1, 1993; paras.

(c), (f), (g), and (x) revised, 61 FR 42790, Aug. 19, 1996,

effective Sept. 23, 1996; paras. (a)(2)(i), (b), (c) & (g)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; paras. (a), (b), (c), (j), (k), (o), and (x) revised, and

para. (y) added, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; paras. (a)(2), (e), and (j) revised, 65 FR

57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c)

revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21,

2004; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004,

effective Nov. 22, 2004; para. (y) revised, 70 FR 3880,

Jan. 27, 2005, effective Dec. 8, 2004; para.(a)(2)

introductory text revised, 78 FR 11024, Feb. 14, 2013,

effective Mar. 16, 2013; paras. (a)(2) and (y) revised, 80

FR 17918, Apr. 2, 2015, effective May 13, 2015]

§ 1.85 Corrections to drawings.

(a) A utility or plant application will not be

placed on the ﬁles for examination until objections

to the drawings have been corrected. Except as

provided in § 1.215(c), any patent application

publication will not include drawings ﬁled after the

application has been placed on the ﬁles for

examination. Unless applicant is otherwise notiﬁed

in an Ofﬁce action, objections to the drawings in a

utility or plant application will not be held in

abeyance, and a request to hold objections to the

drawings in abeyance will not be considered a bona

ﬁde attempt to advance the application to ﬁnal

action (§ 1.135(c)). If a drawing in a design

application meets the requirements of § 1.84(e), (f),

and (g) and is suitable for reproduction, but is not

otherwise in compliance with § 1.84, the drawing

may be admitted for examination.

(b) The Ofﬁce will not release drawings for

purposes of correction. If corrections are necessary,

new corrected drawings must be submitted within

the time set by the Ofﬁce.

drawing does not comply with § 1.84 or an amended

drawing submitted under § 1.121(d) in a

nonprovisional international design application does

not comply with § 1.1026 at the time an application

is allowed, the Ofﬁce may notify the applicant in a

notice of allowability and set a three-month period

of time from the mail date of the notice of

allowability within which the applicant must ﬁle a

corrected drawing in compliance with § 1.84 or

1.1026, as applicable, to avoid abandonment. This

time period is not extendable under § 1.136 (see §

1.136(c)).

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; 53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989;

revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,

2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000,

effective Nov. 29, 2000; para. (c) revised, 69 FR 56481,

Sept. 21, 2004, effective Oct. 21, 2004; para. (c) revised,

78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013;

para. (c) revised, 80 FR 17918, Apr. 2, 2015, effective

May 13, 2015]

§ 1.88 [Reserved]

[Deleted, 58 FR 38719, July 20, 1993, effective

Oct. 1, 1993]

MODELS, EXHIBITS, SPECIMENS

§ 1.91 Models or exhibits not generally

admitted as part of application or patent.

(a) A model or exhibit will not be admitted as

part of the record of an application unless it:

(1) Substantially conforms to the

requirements of § 1.52 or § 1.84;

(2) Is speciﬁcally required by the Ofﬁce; or

(3) Is ﬁled with a petition under this section

including:

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.85

(i) The fee set forth in § 1.17(h); and

(ii) An explanation of why entry of the

model or exhibit in the ﬁle record is necessary to

demonstrate patentability.

(b) Notwithstanding the provisions of paragraph

(a) of this section, a model, working model, or other

physical exhibit may be required by the Ofﬁce if

deemed necessary for any purpose in examination

of the application.

conforms to the requirements of § 1.52 or § 1.84

under paragraph (a)(1) of this section, it 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.

[Revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; para. (a)(3)(i) revised, 65 FR 54604, Sept.

8, 2000, effective Nov. 7, 2000; para. (c) added, 69 FR

56481, Sept. 21, 2004, effective Oct. 21, 2004]

§ 1.92 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

§ 1.93 Specimens.

When the invention relates to a composition of

matter, the applicant may be required to furnish

specimens of the composition, or of its ingredients

or intermediates, for the purpose of inspection or

experiment.

§ 1.94 Return of models, exhibits or

specimens.

(a) Models, exhibits, or specimens may be

returned to the applicant if no longer necessary for

the conduct of business before the Ofﬁce. When

applicant is notiﬁed that a model, exhibit, or

specimen is no longer necessary for the conduct of

business before the Ofﬁce and will be returned,

applicant must arrange for the return of the model,

exhibit, or specimen at the applicant’s expense. The

Ofﬁce will dispose of perishables without notice to

applicant unless applicant notiﬁes the Ofﬁce upon

submission of the model, exhibit or specimen that

a return is desired and makes arrangements for its

return promptly upon notiﬁcation by the Ofﬁce that

the model, exhibit or specimen is no longer

necessary for the conduct of business before the

Ofﬁce.

(b) Applicant is responsible for retaining the

actual model, exhibit, or specimen for the

enforceable life of any patent resulting from the

application. The provisions of this paragraph do not

apply to a model or exhibit that substantially

conforms to the requirements of § 1.52 or § 1.84,

where the model or exhibit has been described by

photographs that substantially conform to § 1.84,

or where the model, exhibit or specimen is

perishable.

paragraph (a) of this section, of the need to arrange

for return of a model, exhibit or specimen, applicant

must arrange for the return within the period set in

such notice, to avoid disposal of the model, exhibit

or specimen by the Ofﬁce. Extensions of time are

available under § 1.136, except in the case of

perishables. Failure to establish that the return of

the item has been arranged for within the period set

or failure to have the item removed from Ofﬁce

storage within a reasonable amount of time

notwithstanding any arrangement for return, will

permit the Ofﬁce to dispose of the model, exhibit

or specimen.

[Revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004,

effective Oct. 21, 2004]

§ 1.95 Copies of exhibits.

Copies of models or other physical exhibits will not

ordinarily be furnished by the Ofﬁce, and any model

or exhibit in an application or patent shall not be

taken from the Ofﬁce except in the custody of an

employee of the Ofﬁce specially authorized by the

Director.

[Revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003]

§ 1.96 Submission of computer program

listings.

(a) General. Descriptions of the operation and

general content of computer program listings should

appear in the description portion of the speciﬁcation.

January 2018R-115

§ 1.96CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

A computer program listing for the purpose of this

section is deﬁned as a printout that lists in

appropriate sequence the instructions, routines, and

other contents of a program for a computer. The

program listing may be either in machine or

machine-independent (object or source) language

which will cause a computer to perform a desired

procedure or task such as solve a problem, regulate

the ﬂow of work in a computer, or control or

monitor events. Computer program listings may be

submitted in patent applications as set forth in

paragraphs (b) and (c) of this section.

(b) Material which will be printed in the patent:

If the computer program listing is contained in 300

lines or fewer, with each line of 72 characters or

fewer, it may be submitted either as drawings or as

part of the speciﬁcation.

(1) Drawings. If the listing is submitted as

drawings, it must be submitted in the manner and

complying with the requirements for drawings as

provided in § 1.84. At least one ﬁgure numeral is

required on each sheet of drawing.

(2) Speciﬁcation.

(i) If the listing is submitted as part of

the speciﬁcation, it must be submitted in accordance

with the provisions of § 1.52.

(ii) Any listing having more than 60 lines

of code that is submitted as part of the speciﬁcation

must be positioned at the end of the description but

before the claims. Any amendment must be made

by way of submission of a substitute sheet.

Any computer program listing may, and any

computer program listing having over 300 lines (up

to 72 characters per line) must, be submitted on a

compact disc in compliance with § 1.52(e). A

compact disc containing such a computer program

listing is to be referred to as a “computer program

listing appendix.” The “computer program listing

appendix” will not be part of the printed patent. The

speciﬁcation must include a reference to the

“computer program listing appendix” at the location

indicated in § 1.77(b)(5).

(1) Multiple computer program listings for

a single application may be placed on a single

compact disc. Multiple compact discs may be

submitted for a single application if necessary. A

separate compact disc is required for each

application containing a computer program listing

that must be submitted on a “computer program

listing appendix.”

(2) The “computer program listing appendix”

must be submitted on a compact disc that complies

with § 1.52(e) and the following speciﬁcations (no

other format shall be allowed):

(i) Computer Compatibility: IBM

PC/XT/AT, or compatibles, or Apple Macintosh;

(ii) Operating System Compatibility:

MS-DOS, MS-Windows, Unix, or Macintosh;

(iii) Line Terminator: ASCII Carriage

Return plus ASCII Line Feed;

(iv) Control Codes: the data must not be

dependent on control characters or codes which are

not deﬁned in the ASCII character set; and

(v) Compression: uncompressed data.

[46 FR 2612, Jan. 12, 1981; para. (b)(1), 54 FR

47519, Nov. 15, 1989, effective Jan. 16, 1990; revised,

61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;

paras. (b) and (c) revised, 65 FR 54604, Sept. 8, 2000,

effective Sept. 8, 2000 (effective date corrected, 65 FR

78958, Dec. 18, 2000; para. (c) introductory text revised,

70 FR 54259, Sept. 14, 2005, effective Sept. 14, 2005]

INFORMATION DISCLOSURE

STATEMENT

§ 1.97 Filing of information disclosure

statement.

(a) In order for an applicant for a patent or for

a reissue of a patent to have an information

disclosure statement in compliance with § 1.98

considered by the Ofﬁce during the pendency of the

application, the information disclosure statement

must satisfy one of paragraphs (b), (c), or (d) of this

section.

(b) An information disclosure statement shall

be considered by the Ofﬁce if ﬁled by the applicant

within any one of the following time periods:

(1) Within three months of the ﬁling date of

a national application other than a continued

prosecution application under § 1.53(d);

(2) Within three months of the date of entry

of the national stage as set forth in § 1.491 in an

international application;

R-116January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.97

(3) Before the mailing of a ﬁrst Ofﬁce action

on the merits;

(4) Before the mailing of a ﬁrst Ofﬁce action

after the ﬁling of a request for continued

examination under § 1.114; or

(5) Within three months of the date of

publication of the international registration under

Hague Agreement Article 10(3) in an international

design application.

be considered by the Ofﬁce if ﬁled after the period

speciﬁed in paragraph (b) of this section, provided

that the information disclosure statement is ﬁled

before the mailing date of any of a ﬁnal action under

§ 1.113, a notice of allowance under § 1.311, or an

action that otherwise closes prosecution in the

application, and it is accompanied by one of:

(1) The statement speciﬁed in paragraph (e)

of this section; or

(2) The fee set forth in § 1.17(p).

(d) An information disclosure statement shall

be considered by the Ofﬁce if ﬁled by the applicant

after the period speciﬁed in paragraph (c) of this

section, provided that the information disclosure

statement is ﬁled on or before payment of the issue

fee and is accompanied by:

(1) The statement speciﬁed in paragraph (e)

of this section; and

(2) The fee set forth in § 1.17(p).

(e) A statement under this section must state

either:

(1) That each item of information contained

in the information disclosure statement was ﬁrst

cited in any communication from a foreign patent

ofﬁce in a counterpart foreign application not more

than three months prior to the ﬁling of the

information disclosure statement; or

(2) That no item of information contained

in the information disclosure statement was cited in

a communication from a foreign patent ofﬁce in a

counterpart foreign application, and, to the

knowledge of the person signing the certiﬁcation

after making reasonable inquiry, no item of

information contained in the information disclosure

statement was known to any individual designated

in § 1.56(c) more than three months prior to the

ﬁling of the information disclosure statement.

(f) No extensions of time for ﬁling an

information disclosure statement are permitted under

§ 1.136. If a bona ﬁde attempt is made to comply

with § 1.98, but part of the required content is

inadvertently omitted, additional time may be given

to enable full compliance.

(g) An information disclosure statement ﬁled

in accordance with this section shall not be

construed as a representation that a search has been

made.

(h) The ﬁling of an information disclosure

statement shall not be construed to be an admission

that the information cited in the statement is, or is

considered to be, material to patentability as deﬁned

in § 1.56(b).

(i) If an information disclosure statement

does not comply with either this section or § 1.98,

it will be placed in the ﬁle but will not be considered

by the Ofﬁce.

[48 FR 2712, Jan. 20, 1983, effective date Feb. 27,

1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992;

para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; paras. (a)- (d) revised, 61 FR 42790, Aug.

19, 1996, effective Sept. 23, 1996; paras. (c)-(e) revised,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

(b) revised, 65 FR 14865, Mar. 20, 2000, effective May

29, 2000 (adopted as ﬁnal, 65 FR 50092, Aug. 16, 2000);

paras. (a) through (e) and (i) revised, 65 FR 54604, Sept.

8, 2000, effective Nov. 7, 2000; paras. (b)(3)-(4) revised

and para. (b)(5) added, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

§ 1.98 Content of information disclosure

statement.

(a) Any information disclosure statement ﬁled

under § 1.97 shall include the items listed in

paragraphs (a)(1), (a)(2) and (a)(3) of this section.

(1) A list of all patents, publications,

applications, or other information submitted for

consideration by the Ofﬁce. U.S. patents and U.S.

patent application publications must be listed in a

section separately from citations of other documents.

Each page of the list must include:

(i) The application number of the

application in which the information disclosure

statement is being submitted;

January 2018R-117

§ 1.98CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(ii) A column that provides a space, next

to each document to be considered, for the

examiner’s initials; and

(iii) A heading that clearly indicates that

the list is an information disclosure statement.

(2) A legible copy of:

(i) Each foreign patent;

(ii) Each publication or that portion

which caused it to be listed, other than U.S. patents

and U.S. patent application publications unless

required by the Ofﬁce;

(iii) For each cited pending unpublished

U.S. application, the application speciﬁcation

including the claims, and any drawing of the

application, or that portion of the application which

caused it to be listed including any claims directed

to that portion; and

(iv) All other information or that portion

which caused it to be listed.

(3)(i) A concise explanation of the

relevance, as it is presently understood by the

individual designated in § 1.56(c) most

knowledgeable about the content of the information,

of each patent, publication, or other information

listed that is not in the English language. The

concise explanation may be either separate from

applicant’s speciﬁcation or incorporated therein.

(ii) A copy of the translation if a written

English-language translation of a

non-English-language document, or portion thereof,

is within the possession, custody, or control of, or

is readily available to any individual designated in

§ 1.56(c).

(b)(1) Each U.S. patent listed in an

information disclosure statement must be identiﬁed

by inventor, patent number, and issue date.

(2) Each U.S. patent application publication

listed in an information disclosure statement shall

be identiﬁed by applicant, patent application

publication number, and publication date.

(3) Each U.S. application listed in an

information disclosure statement must be identiﬁed

by the inventor, application number, and ﬁling date.

(4) Each foreign patent or published foreign

patent application listed in an information disclosure

statement must be identiﬁed by the country or patent

ofﬁce which issued the patent or published the

application, an appropriate document number, and

the publication date indicated on the patent or

published application.

(5) Each publication listed in an information

disclosure statement must be identiﬁed by publisher,

author (if any), title, relevant pages of the

publication, date, and place of publication.

or publications listed in an information disclosure

statement are substantively cumulative, a copy of

one of the patents or publications as speciﬁed in

paragraph (a) of this section may be submitted

without copies of the other patents or publications,

provided that it is stated that these other patents or

publications are cumulative.

(d) A copy of any patent, publication, pending

U.S. application or other information, as speciﬁed

in paragraph (a) of this section, listed in an

information disclosure statement is required to be

provided, even if the patent, publication, pending

U.S. application or other information was previously

submitted to, or cited by, the Ofﬁce in an earlier

application, unless:

(1) The earlier application is properly

identiﬁed in the information disclosure statement

and is relied on for an earlier effective ﬁling date

under 35 U.S.C. 120; and

(2) The information disclosure statement

submitted in the earlier application complies with

paragraphs (a) through (c) of this section.

[42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2712,

Jan. 20, 1983, effective date Feb. 27, 1983; 57 FR 2021,

Jan. 17, 1992, effective Mar. 16, 1992; revised, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(2)

and (b) revised, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000; para. (e) added, 68 FR 38611, June 30,

2003, effective July 30, 2003; paras. (a) and (c) revised

and para. (e) removed, 69 FR 56481, Sept. 21, 2004,

effective Oct. 21, 2004]

§ 1.99 [Reserved]

[Removed and reserved, 77 FR 42150, July 17,

2012, effective Sept. 16, 2012]

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.99

EXAMINATION OF APPLICATIONS

§ 1.101 [Reserved]

[29 FR 13470, Sept. 30, 1964; para. (a), 48 FR

2712, Jan. 20, 1983, effective Feb. 27, 1983; para. (a),

50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 52 FR

20046, May 28, 1987, effective July 1, 1987; para. (a)

revised, 60 FR 20195, Apr. 25, 1995, effective June 8,

1995; removed and reserved, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997]

§ 1.102 Advancement of examination.

(a) Applications will not be advanced out of

turn for examination or for further action except as

provided by this part, or upon order of the Director

to expedite the business of the Ofﬁce, or upon ﬁling

of a request under paragraph (b) or (e) of this section

or upon ﬁling a petition or request under paragraph

the opinion of the Director, will justify so advancing

it.

(b) Applications wherein the inventions are

deemed of peculiar importance to some branch of

the public service and the head of some department

of the Government requests immediate action for

that reason, may be advanced for examination.

may be ﬁled without a fee if the basis for the petition

is:

(1) The applicant’s age or health; or

(2) That the invention will materially:

(i) Enhance the quality of the

environment;

(ii) Contribute to the development or

conservation of energy resources; or

(iii) Contribute to countering terrorism.

(d) A petition to make an application special on

grounds other than those referred to in paragraph

set forth in § 1.17(h).

(e) A request for prioritized examination under

this paragraph must comply with the requirements

of this paragraph and be accompanied by the

prioritized examination fee set forth in § 1.17(c),

the processing fee set forth in § 1.17(i), and if not

already paid, the publication fee set forth in §

1.18(d). An application for which prioritized

examination has been requested may not contain or

be amended to contain more than four independent

claims, more than thirty total claims, or any multiple

dependent claim. Prioritized examination under this

paragraph will not be accorded to international

applications that have not entered the national stage

under 35 U.S.C. 371, design applications, reissue

applications, provisional applications, or

reexamination proceedings. A request for prioritized

examination must also comply with the requirements

of paragraph (e)(1) or paragraph (e)(2) of this

section.

(1) A request for prioritized examination

may be ﬁled with an original utility or plant

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

The application must include a speciﬁcation as

prescribed by 35 U.S.C. 112 including at least one

claim, a drawing when necessary, and the inventor’s

oath or declaration on ﬁling, except that the ﬁling

of an inventor’s oath or declaration may be

postponed in accordance with § 1.53(f)(3) if an

application data sheet meeting the conditions

speciﬁed in § 1.53(f)(3)(i) is present upon ﬁling. If

the application is a utility application, it must be

ﬁled via the Ofﬁce’s electronic ﬁling system and

include the ﬁling fee under § 1.16(a), search fee

under § 1.16(k), and examination fee under § 1.16(o)

upon ﬁling. If the application is a plant application,

it must include the ﬁling fee under § 1.16(c), search

fee under § 1.16(m), and examination fee under §

1.16(q) upon ﬁling. The request for prioritized

examination in compliance with this paragraph must

be present upon ﬁling of the application, except that

the applicant may ﬁle an amendment to cancel any

independent claims in excess of four, any total

claims in excess of thirty, and any multiple

dependent claim not later than one month from a

ﬁrst decision on the request for prioritized

examination. This one-month time period is not

extendable.

(2) A request for prioritized examination

may be ﬁled with or after a request for continued

examination in compliance with § 1.114. If the

application is a utility application, the request must

be ﬁled via the Ofﬁce’s electronic ﬁling system.

The request must be ﬁled before the mailing of the

ﬁrst Ofﬁce action after the ﬁling of the request for

continued examination under § 1.114. Only a single

January 2018R-119

§ 1.102CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

such request for prioritized examination under this

paragraph may be granted in an application.

[24 FR 10332, Dec. 22, 1959; paras. (a), (c), and

(d), 47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982;

para. (d), 54 FR 6893, Feb. 15, 1989, effective Apr. 17,

1989; para. (d) revised, 60 FR 20195, Apr. 25, 1995,

effective June 8, 1995; para. (a) revised, 62 FR 53132,

Oct. 10, 1997, effective Dec. 1, 1997; para. (d) revised,

65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para.

(a) revised, 68 FR 14332, Mar. 25, 2003, effective May

1, 2003; para. (c) revised, 69 FR 56481, Sept. 21, 2004,

effective Oct. 21, 2004; para. (a) revised and para. (e)

added, 76 FR 18399, Apr. 4, 2011, effective date delayed

until further notice, 76 FR 23876, Apr. 29, 2011 and

withdrawn effective Sept. 23, 2011, 76 FR 59050, Sept.

23, 2011; para. (a) revised and para. (e) added, 76 FR

59050, Sept. 23, 2011, effective Sept. 26, 2011; para. (e)

revised, 76 FR 78566, Dec. 19, 2011, effective Dec. 19,

2011; para. (e)(1) revised, 79 FR 12386, Mar. 5, 2014,

effective Mar. 5, 2014 (adopted as ﬁnal, 79 FR 68124,

Nov. 14, 2014)]

§ 1.103 Suspension of action by the Ofﬁce.

(a) Suspension for cause. On request of the

applicant, the Ofﬁce may grant a suspension of

action by the Ofﬁce under this paragraph for good

and sufﬁcient cause. The Ofﬁce will not suspend

action if a reply by applicant to an Ofﬁce action is

outstanding. Any petition for suspension of action

under this paragraph must specify a period of

suspension not exceeding six months. Any petition

for suspension of action under this paragraph must

also include:

(1) A showing of good and sufﬁcient cause

for suspension of action; and

(2) The fee set forth in § 1.17(g), unless such

cause is the fault of the Ofﬁce.

(b) Limited suspension of action in a continued

prosecution application (CPA) ﬁled under §

1.53(d). On request of the applicant, the Ofﬁce may

grant a suspension of action by the Ofﬁce under this

paragraph in a continued prosecution application

ﬁled under § 1.53(d) for a period not exceeding three

months. Any request for suspension of action under

this paragraph must be ﬁled with the request for an

application ﬁled under § 1.53(d), specify the period

of suspension, and include the processing fee set

forth in § 1.17(i).

for continued examination (RCE) under § 1.114.

On request of the applicant, the Ofﬁce may grant a

suspension of action by the Ofﬁce under this

paragraph after the ﬁling of a request for continued

examination in compliance with § 1.114 for a period

not exceeding three months. Any request for

suspension of action under this paragraph must be

ﬁled with the request for continued examination

under § 1.114, specify the period of suspension, and

include the processing fee set forth in § 1.17(i).

(d) Deferral of examination. On request of the

applicant, the Ofﬁce may grant a deferral of

examination under the conditions speciﬁed in this

paragraph for a period not extending beyond three

years from the earliest ﬁling date for which a beneﬁt

is claimed under title 35, United States Code. A

request for deferral of examination under this

paragraph must include the publication fee set forth

in § 1.18(d) and the processing fee set forth in §

1.17(i). A request for deferral of examination under

this paragraph will not be granted unless:

(1) The application is an original utility or

plant application ﬁled under § 1.53(b) or resulting

from entry of an international application into the

national stage after compliance with § 1.495;

(2) The applicant has not ﬁled a

nonpublication request under § 1.213(a), or has ﬁled

a request under § 1.213(b) to rescind a previously

ﬁled nonpublication request;

(3) The application is in condition for

publication as provided in § 1.211(c); and

(4) The Ofﬁce has not issued either an Ofﬁce

action under 35 U.S.C. 132 or a notice of allowance

under 35 U.S.C. 151.

(e) Notice of suspension on initiative of the

Ofﬁce. The Ofﬁce will notify applicant if the Ofﬁce

suspends action by the Ofﬁce on an application on

its own initiative.

(f) Suspension of action for public safety or

defense. The Ofﬁce may suspend action by the

Ofﬁce by order of the Director if the following

conditions are met:

(1) The application is owned by the United

States;

(2) Publication of the invention may be

detrimental to the public safety or defense; and

(3) The appropriate department or agency

requests such suspension.

R-120January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.103

[24 FR 10332, Dec. 22, 1959; 33 FR 5624, Apr.

11, 1968; paras. (a) and (b), 47 FR 41272, Sept. 17, 1982,

effective Oct. 1, 1982; para. (d), 49 FR 48416, Dec. 12,

1984, effective Feb. 11, 1985; para. (d), 50 FR 9381,

Mar. 7, 1985, effective May 8, 1985; para. (a), 54 FR

6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a)

revised, 60 FR 20195, Apr. 25, 1995, effective June 8,

1995; para. (a) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; revised, 65 FR 50092, Aug. 16,

2000, effective Aug. 16, 2000; paras. (d) through (f)

redesignated as (e) through (g) and para. (d) added, 65

FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para.

(d)(1) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1,

2002; para. (f) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; para. (g) revised, 69 FR 49959,

Aug. 12, 2004, effective Sept. 13, 2004; para. (a)(2)

revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22,

2004; para. (g) removed, 78 FR 11024, Feb. 14, 2013,

effective Mar. 16, 2013]

§ 1.104 Nature of examination.

(a) Examiner’s action.

(1) On taking up an application for

examination or a patent in a reexamination

proceeding, the examiner shall make a thorough

study thereof and shall make a thorough

investigation of the available prior art relating to the

subject matter of the claimed invention. The

examination shall be complete with respect both to

compliance of the application or patent under

reexamination with the applicable statutes and rules

and to the patentability of the invention as claimed,

as well as with respect to matters of form, unless

otherwise indicated.

(2) The applicant, or in the case of a

reexamination proceeding, both the patent owner

and the requester, will be notiﬁed of the examiner’s

action. The reasons for any adverse action or any

objection or requirement will be stated in an Ofﬁce

action and such information or references will be

given as may be useful in aiding the applicant, or

in the case of a reexamination proceeding the patent

owner, to judge the propriety of continuing the

prosecution.

(3) An international-type search will be

made in all national applications ﬁled on and after

June 1, 1978.

(4) Any national application may also have

an international-type search report prepared thereon

at the time of the national examination on the merits,

upon speciﬁc written request therefor and payment

of the international-type search report fee set forth

in § 1.21(e). The Patent and Trademark Ofﬁce does

not require that a formal report of an

international-type search be prepared in order to

obtain a search fee refund in a later ﬁled

international application.

(b) Completeness of examiner’s action. The

examiner’s action will be complete as to all matters,

except that in appropriate circumstances, such as

misjoinder of invention, fundamental defects in the

application, and the like, the action of the examiner

may be limited to such matters before further action

is made. However, matters of form need not be

raised by the examiner until a claim is found

allowable.

(1) If the invention is not considered

patentable, or not considered patentable as claimed,

the claims, or those considered unpatentable will be

rejected.

(2) In rejecting claims for want of novelty

or for obviousness, the examiner must cite the best

references at his or her command. When a reference

is complex or shows or describes inventions other

than that claimed by the applicant, the particular

part relied on must be designated as nearly as

practicable. The pertinence of each reference, if not

apparent, must be clearly explained and each

rejected claim speciﬁed.

(3) In rejecting claims the examiner may rely

upon admissions by the applicant, or the patent

owner in a reexamination proceeding, as to any

matter affecting patentability and, insofar as

rejections in applications are concerned, may also

rely upon facts within his or her knowledge pursuant

to paragraph (d)(2) of this section.

(4)(i) Subject matter which would

otherwise qualify as prior art under 35 U.S.C.

102(a)(2) and a claimed invention will be treated as

commonly owned for purposes of 35 U.S.C.

102(b)(2)(C) if the applicant or patent owner

provides a statement to the effect that the subject

matter and the claimed invention, not later than the

effective ﬁling date of the claimed invention, were

owned by the same person or subject to an obligation

of assignment to the same person.

January 2018R-121

§ 1.104CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(ii) Subject matter which would

otherwise qualify as prior art under 35 U.S.C.

102(a)(2) and a claimed invention will be treated as

commonly owned for purposes of 35 U.S.C.

102(b)(2)(C) on the basis of a joint research

agreement under 35 U.S.C. 102(c) if:

(A) The applicant or patent owner

provides a statement to the effect that the subject

matter was developed and the claimed invention

was made by or on behalf of one or more parties to

a joint research agreement, within the meaning of

35 U.S.C. 100(h) and § 1.9(e), that was in effect on

or before the effective ﬁling date of the claimed

invention, and the claimed invention was made as

a result of activities undertaken within the scope of

the joint research agreement; and

(B) The application for patent for the

claimed invention discloses or is amended to

disclose the names of the parties to the joint research

agreement.

(5)(i) Subject matter which qualiﬁes as

prior art under35 U.S.C. 102(e), (f), or (g) in effect

prior to March 16, 2013, and a claimed invention

in an application ﬁled on or after November 29,

1999, or any patent issuing thereon, in an application

ﬁled before November 29, 1999, but pending on

December 10, 2004, or any patent issuing thereon,

or in any patent granted on or after December 10,

2004, will be treated as commonly owned for

purposes of 35 U.S.C. 103(c) in effect prior to

March 16, 2013, if the applicant or patent owner

provides a statement to the effect that the subject

matter and the claimed invention, at the time the

claimed invention was made, were owned by the

same person or subject to an obligation of

assignment to the same person.

(ii) Subject matter which qualiﬁes as

prior art under 35 U.S.C. 102(e), (f), or (g) in effect

prior to March 16, 2013, and a claimed invention

in an application pending on or after December 10,

2004, or in any patent granted on or after December

10, 2004, will be treated as commonly owned for

purposes of 35 U.S.C. 103(c) in effect prior to

March 16, 2013, on the basis of a joint research

agreement under 35 U.S.C. 103(c)(2) in effect prior

to March 16, 2013, if:

(A) The applicant or patent owner

provides a statement to the effect that the subject

matter and the claimed invention were made by or

on behalf of the parties to a joint research agreement,

within the meaning of 35 U.S.C. 100(h) and § 1.9(e),

which was in effect on or before the date the claimed

invention was made, and that the claimed invention

was made as a result of activities undertaken within

the scope of the joint research agreement; and

(B) The application for patent for the

claimed invention discloses or is amended to

disclose the names of the parties to the joint research

agreement.

(6) Patents issued prior to December 10,

2004, from applications ﬁled prior to November 29,

1999, are subject to 35 U.S.C. 103(c) in effect on

November 28, 1999.

(d) Citation of references.

(1) If domestic patents are cited by the

examiner, their numbers and dates, and the names

of the patentees will be stated. If domestic patent

application publications are cited by the examiner,

their publication number, publication date, and the

names of the applicants will be stated. If foreign

published applications or patents are cited, their

nationality or country, numbers and dates, and the

names of the patentees will be stated, and such other

data will be furnished as may be necessary to enable

the applicant, or in the case of a reexamination

proceeding, the patent owner, to identify the

published applications or patents cited. In citing

foreign published applications or patents, in case

only a part of the document is involved, the

particular pages and sheets containing the parts

relied upon will be identiﬁed. If printed publications

are cited, the author (if any), title, date, pages or

plates, and place of publication, or place where a

copy can be found, will be given.

(2) When a rejection in an application is

based on facts within the personal knowledge of an

employee of the Ofﬁce, the data shall be as speciﬁc

as possible, and the reference must be supported,

when called for by the applicant, by the afﬁdavit of

such employee, and such afﬁdavit shall be subject

to contradiction or explanation by the afﬁdavits of

the applicant and other persons.

(e) Reasons for allowance. If the examiner

believes that the record of the prosecution as a whole

does not make clear his or her reasons for allowing

a claim or claims, the examiner may set forth such

reasoning. The reasons shall be incorporated into

an Ofﬁce action rejecting other claims of the

R-122January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.104

application or patent under reexamination or be the

subject of a separate communication to the applicant

or patent owner. The applicant or patent owner may

ﬁle a statement commenting on the reasons for

allowance within such time as may be speciﬁed by

the examiner. Failure by the examiner to respond

to any statement commenting on reasons for

allowance does not give rise to any implication.

[43 FR 20465, May 11, 1978; 46 FR 29182, May

29, 1981; para. (d), 47 FR 41272, Sept. 17, 1982, effective

date Oct. 1, 1982; para. (e), 50 FR 9381, Mar. 7, 1985,

effective May 8, 1985; para. (e), 57 FR 29642, July 6,

1992, effective Sept. 4, 1992; revised, 62 FR 53132, Oct.

10, 1997, effective Dec. 1, 1997; para. (c)(4) revised, 65

FR 14865, Mar. 20, 2000, effective May 29, 2000

(adopted as ﬁnal, 65 FR 50092, Aug. 16, 2000); paras.

(a)(2) and (e) revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; para. (a)(5) removed and para.

(d)(1) revised, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000; para. (c)(4) revised, 70 FR 1818, Jan. 11,

2005, effective Dec. 10, 2004; para. (c)(4) revised, 70

FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; paras.

(a)(1) and (b) revised, 72 FR 46716, Aug. 21, 2007

(implementation enjoined and never became effective);

paras. (a)(1) and (b) revised, 74 FR 52686, Oct. 14, 2009,

effective Oct. 14, 2009 (to remove changes made by the

ﬁnal rules in 72 FR 46716 from the CFR); paras.(c)(4)

and (c)(5) revised and (c)(6) added, 78 FR 11024, Feb.

14, 2013, effective Mar. 16, 2013]

§ 1.105 Requirements for information.

[Editor Note: Some* paragraphs below are not

applicable to patent applications ﬁled before Sept. 16,

2012]

(a)(1) In the course of examining or treating

a matter in a pending or abandoned application, in

a patent, or in a reexamination proceeding, including

a reexamination proceeding ordered as a result of a

supplemental examination proceeding, the examiner

or other Ofﬁce employee may require the

submission, from individuals identiﬁed under §

1.56(c), or any assignee, of such information as may

be reasonably necessary to properly examine or treat

the matter, for example:

(i) Commercial databases: The existence

of any particularly relevant commercial database

known to any of the inventors that could be searched

for a particular aspect of the invention.

(ii) Search: Whether a search of the

prior art was made, and if so, what was searched.

(iii) Related information: A copy of any

non-patent literature, published application, or patent

(U.S. or foreign), by any of the inventors, that relates

to the claimed invention.

(iv) Information used to draft

application: A copy of any non-patent literature,

published application, or patent (U.S. or foreign)

that was used to draft the application.

(v) Information used in invention

process: A copy of any non-patent literature,

published application, or patent (U.S. or foreign)

that was used in the invention process, such as by

designing around or providing a solution to

accomplish an invention result.

(vi) Improvements: Where the claimed

invention is an improvement, identiﬁcation of what

is being improved.

(vii) In Use: Identiﬁcation of any use

of the claimed invention known to any of the

inventors at the time the application was ﬁled

notwithstanding the date of the use.

(viii) Technical information known to

applicant. Technical information known to applicant

concerning the related art, the disclosure, the

claimed subject matter, other factual information

pertinent to patentability, or concerning the accuracy

of the examiner’s stated interpretation of such items.

(2) Requirements for factual information

known to applicant may be presented in any

appropriate manner, for example:

(i) A requirement for factual information;

(ii) Interrogatories in the form of speciﬁc

questions seeking applicant’s factual knowledge; or

(iii) Stipulations as to facts with which

the applicant may agree or disagree.

(3) Any reply to a requirement for

information pursuant to this section that states either

that the information required to be submitted is

unknown to or is not readily available to the party

or parties from which it was requested may be

accepted as a complete reply.

(b) The requirement for information of

paragraph (a)(1) of this section may be included in

an Ofﬁce action, or sent separately.

January 2018R-123

§ 1.105CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

requirement for information under this section will

be governed by §§ 1.135 and 1.136.

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec.1, 1997; added, 65 FR 54604, Sept.

8, 2000, effective Nov. 7, 2000; para. (a)(3) revised and

paras. (a)(1)(viii) and (a)(4) added, 69 FR 56481, Sept.

21, 2004, effective Oct. 21, 2004; para. (a)(1)(ix) added,

72 FR 46716, Aug. 21, 2007 (implementation enjoined

and never became effective); para. (a)(1)(ix) removed,

74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to

remove changes made by the ﬁnal rules in 72 FR 46716

from the CFR); para. (a)(2) removed and paras. (a)(3)

and (a)(4) redesignated as (a)(2) and (a)(3), 77 FR 48776,

Aug. 14, 2012, effective Sept. 16, 2012; para. (a)(1)

introductory text revised, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.105 (pre-AIA) for the rule otherwise in effect.]

§ 1.105 (pre-AIA) Requirements for

information.

[Editor Note: Some* paragraphs below are not

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

(a)(1) In the course of examining or treating

a matter in a pending or abandoned application ﬁled

under 35 U.S.C. 111 or 371 (including a reissue

application), in a patent, or in a reexamination

proceeding, the examiner or other Ofﬁce employee

may require the submission, from individuals

identiﬁed under § 1.56(c), or any assignee, of such

information as may be reasonably necessary to

properly examine or treat the matter, for example:

(i) Commercial databases: The existence

of any particularly relevant commercial database

known to any of the inventors that could be searched

for a particular aspect of the invention.

(ii) Search: Whether a search of the

prior art was made, and if so, what was searched.

(iii) Related information: A copy of any

non-patent literature, published application, or patent

(U.S. or foreign), by any of the inventors, that relates

to the claimed invention.

(iv) Information used to draft

application: A copy of any non-patent literature,

published application, or patent (U.S. or foreign)

that was used to draft the application.

(v) Information used in invention

process: A copy of any non-patent literature,

published application, or patent (U.S. or foreign)

that was used in the invention process, such as by

designing around or providing a solution to

accomplish an invention result.

(vi) Improvements : Where the claimed

invention is an improvement, identiﬁcation of what

is being improved.

(vii) In Use: Identiﬁcation of any use

of the claimed invention known to any of the

inventors at the time the application was ﬁled

notwithstanding the date of the use.

(viii) Technical information known to

applicant. Technical information known to applicant

concerning the related art, the disclosure, the

claimed subject matter, other factual information

pertinent to patentability, or concerning the accuracy

of the examiner’s stated interpretation of such items.

(2) Where an assignee has asserted its right

to prosecute pursuant to § 3.71(a) of this chapter,

matters such as paragraphs (a)(1)(i), (iii), and (vii)

of this section may also be applied to such assignee.

(3) Requirements for factual information

known to applicant may be presented in any

appropriate manner, for example:

(i) A requirement for factual information;

(ii) Interrogatories in the form of speciﬁc

questions seeking applicant’s factual knowledge; or

(iii) Stipulations as to facts with which

the applicant may agree or disagree.

(4) Any reply to a requirement for

information pursuant to this section that states either

that the information required to be submitted is

unknown to or is not readily available to the party

or parties from which it was requested may be

accepted as a complete reply.

(b) The requirement for information of

paragraph (a)(1) of this section may be included in

an Ofﬁce action, or sent separately.

requirement for information under this section will

be governed by §§ 1.135 and 1.136.

R-124January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.105 (pre-AIA)

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec.1, 1997; added, 65 FR 54604, Sept.

8, 2000, effective Nov. 7, 2000; para. (a)(3) revised and

paras. (a)(1)(viii) and (a)(4) added, 69 FR 56481, Sept.

21, 2004, effective Oct. 21, 2004; para. (a)(1)(ix) added,

72 FR 46716, Aug. 21, 2007 (implementation enjoined

and never became effective); para. (a)(1)(ix) removed,

74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to

remove changes made by the ﬁnal rules in 72 FR 46716

from the CFR)]

[*See § 1.105 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.106 [Reserved]

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov.

26, 1969; para. (c) added, 47 FR 21752, May 19, 1982,

effective July 1, 1982; paras. (d) and (e), 50 FR 9381,

Mar. 7, 1985, effective May 8, 1985; removed and

reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997]

§ 1.107 [Reserved]

[46 FR 29182, May 29, 1981; para. (a) revised, 61

FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;

removed and reserved, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997]

§ 1.108 [Reserved]

[50 FR 9381, Mar. 7, 1985, effective May 8, 1985;

removed and reserved, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997]

§ 1.109 Effective ﬁling date of a claimed

invention under the Leahy-Smith America

Invents Act.

(a) The effective ﬁling date for a claimed

invention in a patent or application for patent, other

than in a reissue application or reissued patent, is

the earliest of:

(1) The actual ﬁling date of the patent or the

application for the patent containing a claim to the

invention; or

(2) The ﬁling date of the earliest application

for which the patent or application is entitled, as to

such invention, to a right of priority or the beneﬁt

of an earlier ﬁling date under 35 U.S.C. 119, 120,

121, 365, or 386.

(b) The effective ﬁling date for a claimed

invention in a reissue application or a reissued patent

is determined by deeming the claim to the invention

to have been contained in the patent for which

reissue was sought.

[Added 78 FR 11024, Feb. 14, 2013, effective Mar.

16, 2013; revised, 80 FR 17918, Apr. 2, 2015, effective

May 13, 2015]

§ 1.110 Inventorship and ownership of the

subject matter of individual claims.

When one or more joint inventors are named in an

application or patent, the Ofﬁce may require an

applicant or patentee to identify the inventorship

and ownership or obligation to assign ownership,

of each claimed invention on its effective ﬁling date

(as deﬁned in § 1.109) or on its date of invention,

as applicable, when necessary for purposes of an

Ofﬁce proceeding. The Ofﬁce may also require an

applicant or patentee to identify the invention dates

of the subject matter of each claim when necessary

for purposes of an Ofﬁce proceeding.

[50 FR 9381, Mar. 7, 1985, effective date May 8,

1985; revised, 61 FR 42790, Aug. 19, 1996, effective

Sept. 23, 1996; revised, 72 FR 46716, Aug. 21, 2007

(implementation enjoined and never became effective);

revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14,

2009 (to remove changes made by the ﬁnal rules in 72

FR 46716 from the CFR); revised, 78 FR 11024, Feb.

14, 2013, effective Mar. 16, 2013]

ACTION BY APPLICANT AND FURTHER

CONSIDERATION

§ 1.111 Reply by applicant or patent owner

to a non-ﬁnal Ofﬁce action.

(a)(1) If the Ofﬁce action after the ﬁrst

examination (§ 1.104) is adverse in any respect, the

applicant or patent owner, if he or she persists in his

or her application for a patent or reexamination

proceeding, must reply and request reconsideration

or further examination, with or without amendment.

See §§ 1.135 and 1.136 for time for reply to avoid

abandonment.

(2) Supplemental replies.

(i) A reply that is supplemental to a reply

that is in compliance with § 1.111(b) will not be

January 2018R-125

§ 1.111CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

entered as a matter of right except as provided in

paragraph (a)(2)(ii) of this section. The Ofﬁce may

enter a supplemental reply if the supplemental reply

is clearly limited to:

(A) Cancellation of a claim(s);

(B) Adoption of the examiner

suggestion(s);

condition for allowance;

(D) Reply to an Ofﬁce requirement

made after the ﬁrst reply was ﬁled;

(E) Correction of informalities (e.g.,

typographical errors); or

(F) Simpliﬁcation of issues for

appeal.

(ii) A supplemental reply will be entered

if the supplemental reply is ﬁled within the period

during which action by the Ofﬁce is suspended

under § 1.103(a) or (c).

(b) In order to be entitled to reconsideration or

further examination, the applicant or patent owner

must reply to the Ofﬁce action. The reply by the

applicant or patent owner must be reduced to a

writing which distinctly and speciﬁcally points out

the supposed errors in the examiner’s action and

must reply to every ground of objection and

rejection in the prior Ofﬁce action. The reply must

present arguments pointing out the speciﬁc

distinctions believed to render the claims, including

any newly presented claims, patentable over any

applied references. If the reply is with respect to an

application, a request may be made that objections

or requirements as to form not necessary to further

consideration of the claims be held in abeyance until

allowable subject matter is indicated. The applicant’s

or patent owner’s reply must appear throughout to

be a bona ﬁde attempt to advance the application

or the reexamination proceeding to ﬁnal action. A

general allegation that the claims deﬁne a patentable

invention without speciﬁcally pointing out how the

language of the claims patentably distinguishes them

from the references does not comply with the

requirements of this section.

in an application or patent under reexamination, the

applicant or patent owner must clearly point out the

patentable novelty which he or she thinks the claims

present in view of the state of the art disclosed by

the references cited or the objections made. The

applicant or patent owner must also show how the

amendments avoid such references or objections.

[46 FR 29182, May 29, 1981; para. (b) revised, 62

FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras.

(a) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; para. (a)(2) revised, 68 FR 14332, Mar.

25, 2003, effective May 1, 2003; para. (a)(2) revised, 69

FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para.

(a)(2)(i) revised, 70 FR 3880, Jan. 27, 2005, effective

Dec. 8. 2004]

§ 1.112 Reconsideration before ﬁnal action.

After reply by applicant or patent owner (§ 1.111

or § 1.945) to a non-ﬁnal action and any comments

by an inter partes reexamination requester (§ 1.947),

the application or the patent under reexamination

will be reconsidered and again examined. The

applicant, or in the case of a reexamination

proceeding the patent owner and any third party

requester, will be notiﬁed if claims are rejected,

objections or requirements made, or decisions

favorable to patentability are made, in the same

manner as after the ﬁrst examination (§ 1.104).

Applicant or patent owner may reply to such Ofﬁce

action in the same manner provided in § 1.111 or §

1.945, with or without amendment, unless such

Ofﬁce action indicates that it is made ﬁnal (§ 1.113)

or an appeal (§ 41.31 of this title) has been taken (§

1.116), or in an inter partes reexamination, that it is

an action closing prosecution (§ 1.949) or a right of

appeal notice (§ 1.953).

[46 FR 29182, May 29, 1981; revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65

FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; revised,

65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001;

revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,

2004]

§ 1.113 Final rejection or action.

(a) On the second or any subsequent

examination or consideration by the examiner the

rejection or other action may be made ﬁnal,

whereupon applicant’s, or for ex parte

reexaminations ﬁled under § 1.510, patent owner’s

reply is limited to appeal in the case of rejection of

any claim (§ 41.31 of this title), or to amendment

as speciﬁed in § 1.114 or § 1.116. Petition may be

taken to the Director in the case of objections or

R-126January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.112

requirements not involved in the rejection of any

claim (§ 1.181). Reply to a ﬁnal rejection or action

must comply with § 1.114 or paragraph (c) of this

section. For ﬁnal actions in an inter partes

reexamination ﬁled under § 1.913, see § 1.953.

(b) In making such ﬁnal rejection, the examiner

shall repeat or state all grounds of rejection then

considered applicable to the claims in the

application, clearly stating the reasons in support

thereof.

include cancellation of, or appeal from the rejection

of, each rejected claim. If any claim stands allowed,

the reply to a ﬁnal rejection or action must comply

with any requirements or objections as to form.

[24 FR 10332, Dec. 22, 1959; 46 FR 29182, May

29, 1981; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; revised, 65 FR 14865, Mar. 20, 2000,

effective May 29, 2000 (adopted as ﬁnal, 65 FR 50092,

Aug. 16, 2000); para. (a) revised, 65 FR 76756, Dec. 7,

2000, effective Feb. 5, 2001; para. (a) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para. (a)

revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,

2004]

§ 1.114 Request for continued examination.

(a) If prosecution in an application is closed, an

applicant may request continued examination of the

application by ﬁling a submission and the fee set

forth in § 1.17(e) prior to the earliest of:

(1) Payment of the issue fee, unless a

petition under § 1.313 is granted;

(2) Abandonment of the application; or

(3) The ﬁling of a notice of appeal to the

U.S. Court of Appeals for the Federal Circuit under

35 U.S.C. 141, or the commencement of a civil

action under 35 U.S.C. 145 or 146, unless the appeal

or civil action is terminated.

(b) Prosecution in an application is closed as

used in this section means that the application is

under appeal, or that the last Ofﬁce action is a ﬁnal

action (§ 1.113), a notice of allowance (§ 1.311), or

an action that otherwise closes prosecution in the

application.

includes, but is not limited to, an information

disclosure statement, an amendment to the written

description, claims, or drawings, new arguments,

or new evidence in support of patentability. If reply

to an Ofﬁce action under 35 U.S.C. 132 is

outstanding, the submission must meet the reply

requirements of § 1.111.

(d) If an applicant timely ﬁles a submission and

fee set forth in § 1.17(e), the Ofﬁce will withdraw

the ﬁnality of any Ofﬁce action and the submission

will be entered and considered. If an applicant ﬁles

a request for continued examination under this

section after appeal, but prior to a decision on the

appeal, it will be treated as a request to withdraw

the appeal and to reopen prosecution of the

application before the examiner. An appeal brief (§

41.37 of this title) or a reply brief (§ 41.41 of this

title), or related papers, will not be considered a

submission under this section.

(e) The provisions of this section do not apply

to:

(1) A provisional application;

(2) An application for a utility or plant patent

ﬁled under 35 U.S.C. 111(a) before June 8, 1995;

(3) An international application ﬁled under

35 U.S.C. 363 before June 8, 1995, or an

international application that does not comply with

35 U.S.C. 371;

(4) An application for a design patent;

(5) An international design application; or

(6) A patent under reexamination.

[Added 65 FR 14865, Mar. 20, 2000, effective May

29, 2000; revised 65 FR 50092, Aug. 16, 2000; para. (d)

revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,

2004; paras. (a) and (d) revised and (f), (g), and (h) added,

72 FR 46716, Aug. 21, 2007 (implementation enjoined

and never became effective); paras. (a) and (d) revised

and (f), (g), and (h) removed, 74 FR 52686, Oct. 14, 2009,

effective Oct. 14, 2009 (to remove changes made by the

ﬁnal rules in 72 FR 46716 from the CFR); paras.

(e)(3)-(5) revised and para. (e)(6) added, 80 FR 17918,

Apr. 2, 2015, effective May 13, 2015]

AMENDMENTS

§ 1.115 Preliminary amendments.

(a) A preliminary amendment is an amendment

that is received in the Ofﬁce (§ 1.6) on or before the

mail date of the ﬁrst Ofﬁce action under § 1.104.

January 2018R-127

§ 1.115CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

The patent application publication may include

preliminary amendments (§ 1.215(a)).

(1) A preliminary amendment that is present

on the ﬁling date of an application is part of the

original disclosure of the application.

(2) A preliminary amendment ﬁled after the

ﬁling date of the application is not part of the

original disclosure of the application.

(b) A preliminary amendment in compliance

with § 1.121 will be entered unless disapproved by

the Director.

(1) A preliminary amendment seeking

cancellation of all the claims without presenting any

new or substitute claims will be disapproved.

(2) A preliminary amendment may be

disapproved if the preliminary amendment unduly

interferes with the preparation of a ﬁrst Ofﬁce action

in an application. Factors that will be considered in

disapproving a preliminary amendment include:

(i) The state of preparation of a ﬁrst

Ofﬁce action as of the date of receipt (§ 1.6) of the

preliminary amendment by the Ofﬁce; and

(ii) The nature of any changes to the

speciﬁcation or claims that would result from entry

of the preliminary amendment.

(3) A preliminary amendment will not be

disapproved under (b)(2) of this section if it is ﬁled

no later than:

(i) Three months from the ﬁling date of

an application under § 1.53(b);

(ii) The ﬁling date of a continued

prosecution application under § 1.53(d); or

(iii) Three months from the date the

national stage is entered as set forth in § 1.491 in

an international application.

(4) The time periods speciﬁed in paragraph

(b)(3) of this section are not extendable.

[46 FR 29183, May 29, 1981; removed and

reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov.

7, 2000; para. (b)(1) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; revised, 69 FR 56481, Sept. 21,

2004, effective Sept. 21, 2004]

§ 1.116 Amendments and afﬁdavits or other

evidence after ﬁnal action and prior to

appeal.

(a) An amendment after ﬁnal action must

comply with § 1.114 or this section.

(b) After a ﬁnal rejection or other ﬁnal action

(§ 1.113) in an application or in an ex parte

reexamination ﬁled under § 1.510, or an action

closing prosecution (§ 1.949) in an inter partes

reexamination ﬁled under § 1.913, but before or on

the same date of ﬁling an appeal (§ 41.31 or § 41.61

of this title):

(1) An amendment may be made canceling

claims or complying with any requirement of form

expressly set forth in a previous Ofﬁce action;

(2) An amendment presenting rejected

claims in better form for consideration on appeal

may be admitted; or

(3) An amendment touching the merits of

the application or patent under reexamination may

be admitted upon a showing of good and sufﬁcient

reasons why the amendment is necessary and was

not earlier presented.

amendment after a ﬁnal rejection, a ﬁnal action, an

action closing prosecution, or any related

proceedings will not operate to relieve the

application or reexamination proceeding from its

condition as subject to appeal or to save the

application from abandonment under § 1.135, or the

reexamination prosecution from termination under

§ 1.550(d) or § 1.957(b) or limitation of further

prosecution under § 1.957(c).

(d)(1) Notwithstanding the provisions of

paragraph (b) of this section, no amendment other

than canceling claims, where such cancellation does

not affect the scope of any other pending claim in

the proceeding, can be made in an inter partes

reexamination proceeding after the right of appeal

notice under § 1.953 except as provided in § 1.981

or as permitted by § 41.77(b)(1) of this title.

(2) Notwithstanding the provisions of

paragraph (b) of this section, an amendment made

after a ﬁnal rejection or other ﬁnal action (§ 1.113)

in an ex parte reexamination ﬁled under § 1.510, or

an action closing prosecution (§ 1.949) in an inter

partes reexamination ﬁled under § 1.913 may not

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.116

cancel claims where such cancellation affects the

scope of any other pending claim in the

reexamination proceeding except as provided in §

1.981 or as permitted by § 41.77(b)(1) of this title.

(e) An afﬁdavit or other evidence submitted

after a ﬁnal rejection or other ﬁnal action (§ 1.113)

in an application or in an ex parte reexamination

ﬁled under § 1.510, or an action closing prosecution

(§ 1.949) in an inter partes reexamination ﬁled under

§ 1.913 but before or on the same date of ﬁling an

appeal (§ 41.31 or § 41.61 of this title), may be

admitted upon a showing of good and sufﬁcient

reasons why the afﬁdavit or other evidence is

necessary and was not earlier presented.

(f) Notwithstanding the provisions of

paragraph (e) of this section, no afﬁdavit or other

evidence can be made in an inter partes

reexamination proceeding after the right of appeal

notice under § 1.953 except as provided in § 1.981

or as permitted by § 41.77(b)(1) of this title.

(g) After decision on appeal, amendments,

afﬁdavits and other evidence can only be made as

provided in §§ 1.198 and 1.981, or to carry into

effect a recommendation under § 41.50(c) of this

title.

[24 FR 10332, Dec. 22, 1959; 46 FR 29183, May

29, 1981; para. (a) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; revised, 65 FR 14865, Mar. 20,

2000, effective May 29, 2000 (adopted as ﬁnal, 65 FR

50092, Aug. 16, 2000); paras. (b) and (d) revised, 65 FR

76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69

FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]

§ 1.117 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; added, 72 FR 46716, Aug.

21, 2007 (implementation enjoined and never became

effective); removed, 74 FR 52686, Oct. 14, 2009,

effective Oct. 14, 2009 (to remove changes made by the

ﬁnal rules in 72 FR 46716 from the CFR)]

§ 1.118 [Reserved]

[48 FR 2712, Jan. 20, 1983, effective Feb. 27,

1983; removed and reserved, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997]

§ 1.119 [Reserved]

[32 FR 13583, Sept. 28, 1967; removed and

reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997]

§ 1.121 Manner of making amendments in

applications.

(a) Amendments in applications, other than

reissue applications. Amendments in applications,

other than reissue applications, are made by ﬁling

a paper, in compliance with § 1.52, directing that

speciﬁed amendments be made.

(b) Speciﬁcation. Amendments to the

speciﬁcation, other than the claims, computer

listings (§ 1.96) and sequence listings (§ 1.825),

must be made by adding, deleting or replacing a

paragraph, by replacing a section, or by a substitute

speciﬁcation, in the manner speciﬁed in this section.

(1) Amendment to delete, replace, or add a

paragraph. Amendments to the speciﬁcation,

including amendment to a section heading or the

title of the invention which are considered for

amendment purposes to be an amendment of a

paragraph, must be made by submitting:

(i) An instruction, which unambiguously

identiﬁes the location, to delete one or more

paragraphs of the speciﬁcation, replace a paragraph

with one or more replacement paragraphs, or add

one or more paragraphs;

(ii) The full text of any replacement

paragraph with markings to show all the changes

relative to the previous version of the paragraph.

The text of any added subject matter must be shown

by underlining the added text. The text of any

deleted matter must be shown by strike-through

except that double brackets placed before and after

the deleted characters may be used to show deletion

of ﬁve or fewer consecutive characters. The text of

any deleted subject matter must be shown by being

placed within double brackets if strike-through

cannot be easily perceived;

(iii) The full text of any added paragraphs

without any underlining; and

(iv) The text of a paragraph to be deleted

must not be presented with strike-through or placed

within double brackets. The instruction to delete

January 2018R-129

§ 1.121CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

may identify a paragraph by its paragraph number

or include a few words from the beginning, and end,

of the paragraph, if needed for paragraph

identiﬁcation purposes.

(2) Amendment by replacement section. If

the sections of the speciﬁcation contain section

headings as provided in § 1.77(b), § 1.154(b), or §

1.163(c), amendments to the speciﬁcation, other

than the claims, may be made by submitting:

(i) A reference to the section heading

along with an instruction, which unambiguously

identiﬁes the location, to delete that section of the

speciﬁcation and to replace such deleted section

with a replacement section; and

(ii) A replacement section with markings

to show all changes relative to the previous version

of the section. The text of any added subject matter

must be shown by underlining the added text. The

text of any deleted matter must be shown by

strike-through except that double brackets placed

before and after the deleted characters may be used

to show deletion of ﬁve or fewer consecutive

characters. The text of any deleted subject matter

must be shown by being placed within double

brackets if strike-through cannot be easily perceived.

(3) Amendment by substitute speciﬁcation.

The speciﬁcation, other than the claims, may also

be amended by submitting:

(i) An instruction to replace the

speciﬁcation; and

(ii) A substitute speciﬁcation in

compliance with §§ 1.125(b) and (c).

(4) Reinstatement of previously deleted

paragraph or section. A previously deleted

paragraph or section may be reinstated only by a

subsequent amendment adding the previously

deleted paragraph or section.

(5) Presentation in subsequent amendment

document. Once a paragraph or section is amended

in a ﬁrst amendment document, the paragraph or

section shall not be represented in a subsequent

amendment document unless it is amended again or

a substitute speciﬁcation is provided.

made by rewriting the entire claim with all changes

(e.g., additions and deletions) as indicated in this

subsection, except when the claim is being canceled.

Each amendment document that includes a change

to an existing claim, cancellation of an existing

claim or addition of a new claim, must include a

complete listing of all claims ever presented,

including the text of all pending and withdrawn

claims, in the application. The claim listing,

including the text of the claims, in the amendment

document will serve to replace all prior versions of

the claims, in the application. In the claim listing,

the status of every claim must be indicated after its

claim number by using one of the following

identiﬁers in a parenthetical expression: (Original),

(Currently amended), (Canceled), (Withdrawn),

(Previously presented), (New), and (Not entered).

(1) Claim listing. All of the claims presented

in a claim listing shall be presented in ascending

numerical order. Consecutive claims having the

same status of “canceled” or “not entered” may be

aggregated into one statement (e.g., Claims 1–5

(canceled)). The claim listing shall commence on a

separate sheet of the amendment document and the

sheet(s) that contain the text of any part of the claims

shall not contain any other part of the amendment.

(2) When claim text with markings is

required. All claims being currently amended in an

amendment paper shall be presented in the claim

listing, indicate a status of “currently amended,”

and be submitted with markings to indicate the

changes that have been made relative to the

immediate prior version of the claims. The text of

any added subject matter must be shown by

underlining the added text. The text of any deleted

matter must be shown by strike-through except that

double brackets placed before and after the deleted

characters may be used to show deletion of ﬁve or

fewer consecutive characters. The text of any deleted

subject matter must be shown by being placed within

double brackets if strike-through cannot be easily

perceived. Only claims having the status of

“currently amended,” or “withdrawn” if also being

amended, shall include markings. If a withdrawn

claim is currently amended, its status in the claim

listing may be identiﬁed as “withdrawn— currently

amended.”

(3) When claim text in clean version is

required. The text of all pending claims not being

currently amended shall be presented in the claim

listing in clean version, i.e., without any markings

in the presentation of text. The presentation of a

clean version of any claim having the status of

“original,” “withdrawn” or “previously presented”

R-130January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.121

will constitute an assertion that it has not been

changed relative to the immediate prior version,

except to omit markings that may have been present

in the immediate prior version of the claims of the

status of “withdrawn” or “previously presented.”

Any claim added by amendment must be indicated

with the status of “new” and presented in clean

version, i.e., without any underlining.

(4) When claim text shall not be presented;

canceling a claim.

(i) No claim text shall be presented for

any claim in the claim listing with the status of

“canceled” or “not entered.”

(ii) Cancellation of a claim shall be

effected by an instruction to cancel a particular claim

number. Identifying the status of a claim in the claim

listing as “canceled” will constitute an instruction

to cancel the claim.

(5) Reinstatement of previously canceled

claim. A claim which was previously canceled may

be reinstated only by adding the claim as a “new”

claim with a new claim number.

(d) Drawings. One or more application

drawings shall be amended in the following manner:

Any changes to an application drawing must be in

compliance with § 1.84 or, for a nonprovisional

international design application, in compliance with

§§ 1.84(c) and 1.1026 and must be submitted on a

replacement sheet of drawings which shall be an

attachment to the amendment document and, in the

top margin, labeled "Replacement Sheet." Any

replacement sheet of drawings shall include all of

the ﬁgures appearing on the immediate prior version

of the sheet, even if only one ﬁgure is amended.

Any new sheet of drawings containing an additional

ﬁgure must be labeled in the top margin as "New

Sheet." All changes to the drawings shall be

explained, in detail, in either the drawing

amendment or remarks section of the amendment

paper.

(1) A marked-up copy of any amended

drawing ﬁgure, including annotations indicating the

changes made, may be included. The marked-up

copy must be clearly labeled as “Annotated Sheet”

and must be presented in the amendment or remarks

section that explains the change to the drawings.

(2) A marked-up copy of any amended

drawing ﬁgure, including annotations indicating the

changes made, must be provided when required by

the examiner.

(e) Disclosure consistency. The disclosure must

be amended, when required by the Ofﬁce, to correct

inaccuracies of description and deﬁnition, and to

secure substantial correspondence between the

claims, the remainder of the speciﬁcation, and the

drawings.

(f) No new matter. No amendment may

introduce new matter into the disclosure of an

application.

(g) Exception for examiner’s amendments.

Changes to the speciﬁcation, including the claims,

of an application made by the Ofﬁce in an

examiner’s amendment may be made by speciﬁc

instructions to insert or delete subject matter set

forth in the examiner’s amendment by identifying

the precise point in the speciﬁcation or the claim(s)

where the insertion or deletion is to be made.

Compliance with paragraphs (b)(1), (b)(2), or (c) of

this section is not required.

(h) Amendment sections. Each section of an

amendment document (e.g., amendment to the

claims, amendment to the speciﬁcation, replacement

drawings, and remarks) must begin on a separate

sheet.

(i) Amendments in reissue applications. Any

amendment to the description and claims in reissue

applications must be made in accordance with §

1.173.

(j) Amendments in reexamination proceedings.

Any proposed amendment to the description and

claims in patents involved in reexamination

proceedings must be made in accordance with §

1.530.

(k) Amendments in provisional applications.

Amendments in provisional applications are not

usually made. If an amendment is made to a

provisional application, however, it must comply

with the provisions of this section. Any amendments

to a provisional application shall be placed in the

provisional application ﬁle but may not be entered.

[32 FR 13583, Sept. 28, 1967; 46 FR 29183, May

29, 1981; para. (e), 49 FR 555, Jan. 4, 1984, effective

Apr. 1, 1984; revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; para. (i) revised, 65 FR

76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68

FR 38611, June 30, 2003, effective July 30, 2003; para.

January 2018R-131

§ 1.121CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(d) revised, 69 FR 56481, Sept. 21, 2004, effective Oct.

21, 2004; para. (d) introductory text revised, 80 FR

17918, Apr. 2, 2015, effective May 13, 2015]

§ 1.122 [Reserved]

[24 FR 10332, Dec. 22, 1959; para. (b), 49 FR

48416, Dec. 12, 1984, effective Feb. 11, 1985; removed

and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997]

§ 1.123 [Reserved]

[48 FR 2712, Jan. 20, 1983, effective Feb. 27,

1983; 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984;

amended, 58 FR 38719, July 20, 1993, effective Oct. 1,

1993; removed and reserved, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997]

§ 1.124 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

§ 1.125 Substitute speciﬁcation.

(a) If the number or nature of the amendments

or the legibility of the application papers renders it

difﬁcult to consider the application, or to arrange

the papers for printing or copying, the Ofﬁce may

require the entire speciﬁcation, including the claims,

or any part thereof, be rewritten.

(b) Subject to § 1.312, a substitute speciﬁcation,

excluding the claims, may be ﬁled at any point up

to payment of the issue fee if it is accompanied by

a statement that the substitute speciﬁcation includes

no new matter.

this section must be submitted with markings

showing all the changes relative to the immediate

prior version of the speciﬁcation of record. The text

of any added subject matter must be shown by

underlining the added text. The text of any deleted

matter must be shown by strike-through except that

double brackets placed before and after the deleted

characters may be used to show deletion of ﬁve or

fewer consecutive characters. The text of any deleted

subject matter must be shown by being placed within

double brackets if strike-through cannot be easily

perceived. An accompanying clean version (without

markings) must also be supplied. Numbering the

paragraphs of the speciﬁcation of record is not

considered a change that must be shown pursuant

to this paragraph.

(d) A substitute speciﬁcation under this section

is not permitted in a reissue application or in a

reexamination proceeding.

[48 FR 2712, Jan. 20, 1983, effective Feb. 27,

1983; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997; paras. (b)(2) and (c) revised, 65 FR 54604, Sept.

8, 2000, effective Nov. 7, 2000; paras. (b) and (c) revised,

68 FR 38611, June 30, 2003, effective July 30, 2003]

§ 1.126 Numbering of claims.

The original numbering of the claims must be

preserved throughout the prosecution. When claims

are canceled the remaining claims must not be

renumbered. When claims are added, they must be

numbered by the applicant consecutively beginning

with the number next following the highest

numbered claim previously presented (whether

entered or not). When the application is ready for

allowance, the examiner, if necessary, will renumber

the claims consecutively in the order in which they

appear or in such order as may have been requested

by applicant.

[32 FR 13583, Sept. 28, 1967; revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997]

§ 1.127 Petition from refusal to admit

amendment.

From the refusal of the primary examiner to admit

an amendment, in whole or in part, a petition will

lie to the Director under § 1.181.

[Revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003]

TRANSITIONAL PROVISIONS

§ 1.129 Transitional procedures for limited

examination after ﬁnal rejection and

restriction practice.

(a) An applicant in an application, other than

for reissue or a design patent, that has been pending

for at least two years as of June 8, 1995, taking into

account any reference made in such application to

any earlier ﬁled application under 35 U.S.C. 120,

121 and 365(c), is entitled to have a ﬁrst submission

R-132January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.122

entered and considered on the merits after ﬁnal

rejection under the following circumstances: The

Ofﬁce will consider such a submission, if the ﬁrst

submission and the fee set forth in § 1.17(r) are ﬁled

prior to the ﬁling of an appeal brief and prior to

abandonment of the application. The ﬁnality of the

ﬁnal rejection is automatically withdrawn upon the

timely ﬁling of the submission and payment of the

fee set forth in § 1.17(r). If a subsequent ﬁnal

rejection is made in the application, applicant is

entitled to have a second submission entered and

considered on the merits after the subsequent ﬁnal

rejection under the following circumstances: The

Ofﬁce will consider such a submission, if the second

submission and a second fee set forth in § 1.17(r)

are ﬁled prior to the ﬁling of an appeal brief and

prior to abandonment of the application. The ﬁnality

of the subsequent ﬁnal rejection is automatically

withdrawn upon the timely ﬁling of the submission

and payment of the second fee set forth in § 1.17(r).

Any submission ﬁled after a ﬁnal rejection made in

an application subsequent to the fee set forth in §

1.17(r) having been twice paid will be treated as set

forth in § 1.116. A submission as used in this

paragraph includes, but is not limited to, an

information disclosure statement, an amendment to

the written description, claims or drawings and a

new substantive argument or new evidence in

support of patentability.

(b)(1) In an application, other than for

reissue or a design patent, that has been pending for

at least three years as of June 8, 1995; taking into

account any reference made in the application to

any earlier ﬁled application under 35 U.S.C. 120,

121 and 365(c), no requirement for restriction or for

the ﬁling of divisional applications shall be made

or maintained in the application after June 8, 1995,

except where:

(i) The requirement was ﬁrst made in the

application or any earlier ﬁled application under 35

U.S.C. 120, 121, and 365(c) prior to April 8, 1995;

(ii) The examiner has not made a

requirement for restriction in the present or parent

application prior to April 8, 1995, due to actions by

the applicant; or

(iii) The required fee for examination of

each additional invention was not paid.

(2) If the application contains more than one

independent and distinct invention and a requirement

for restriction or for the ﬁling of divisional

applications cannot be made or maintained pursuant

to this paragraph, applicant will be so notiﬁed and

given a time period to:

(i) Elect the invention or inventions to

be searched and examined, if no election has been

made prior to the notice, and pay the fee set forth

in § 1.17(s) for each independent and distinct

invention claimed in the application in excess of

one which applicant elects;

(ii) Conﬁrm an election made prior to

the notice and pay the fee set forth in § 1.17(s) for

each independent and distinct invention claimed in

the application in addition to the one invention

which applicant previously elected; or

(iii) File a petition under this section

traversing the requirement. If the required petition

is ﬁled in a timely manner, the original time period

for electing and paying the fee set forth in § 1.17(s)

will be deferred and any decision on the petition

afﬁrming or modifying the requirement will set a

new time period to elect the invention or inventions

to be searched and examined and to pay the fee set

forth in § 1.17(s) for each independent and distinct

invention claimed in the application in excess of

one which applicant elects.

(3) The additional inventions for which the

required fee has not been paid will be withdrawn

from consideration under § 1.142(b). An applicant

who desires examination of an invention so

withdrawn from consideration can ﬁle a divisional

application under 35 U.S.C. 121.

applicable to any application ﬁled after June 8, 1995.

[Added, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995]

AFFIDAVITS OVERCOMING

REJECTIONS

§ 1.130 Afﬁdavit or declaration of

attribution or prior public disclosure under

the Leahy-Smith America Invents Act.

(a) Afﬁdavit or declaration of attribution. When

any claim of an application or a patent under

reexamination is rejected, the applicant or patent

owner may submit an appropriate afﬁdavit or

January 2018R-133

§ 1.130CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

declaration to disqualify a disclosure as prior art by

establishing that the disclosure was made by the

inventor or a joint inventor, or the subject matter

disclosed was obtained directly or indirectly from

the inventor or a joint inventor.

(b) Afﬁdavit or declaration of prior public

disclosure. When any claim of an application or a

patent under reexamination is rejected, the applicant

or patent owner may submit an appropriate afﬁdavit

or declaration to disqualify a disclosure as prior art

by establishing that the subject matter disclosed had,

before such disclosure was made or before such

subject matter was effectively ﬁled, been publicly

disclosed by the inventor or a joint inventor or

another who obtained the subject matter disclosed

directly or indirectly from the inventor or a joint

inventor. An afﬁdavit or declaration under this

paragraph must identify the subject matter publicly

disclosed and provide the date such subject matter

was publicly disclosed by the inventor or a joint

inventor or another who obtained the subject matter

disclosed directly or indirectly from the inventor or

a joint inventor.

(1) If the subject matter publicly disclosed

on that date was in a printed publication, the

afﬁdavit or declaration must be accompanied by a

copy of the printed publication.

(2) If the subject matter publicly disclosed

on that date was not in a printed publication, the

afﬁdavit or declaration must describe the subject

matter with sufﬁcient detail and particularity to

determine what subject matter had been publicly

disclosed on that date by the inventor or a joint

inventor or another who obtained the subject matter

disclosed directly or indirectly from the inventor or

a joint inventor.

provisions of this section are not available if the

rejection is based upon a disclosure made more than

one year before the effective ﬁling date of the

claimed invention. The provisions of this section

may not be available if the rejection is based upon

a U.S. patent or U.S. patent application publication

of a patented or pending application naming another

inventor, the patent or pending application claims

an invention that is the same or substantially the

same as the applicant’s or patent owner’s claimed

invention, and the afﬁdavit or declaration contends

that an inventor named in the U.S. patent or U.S.

patent application publication derived the claimed

invention from the inventor or a joint inventor

named in the application or patent, in which case

an applicant or a patent owner may ﬁle a petition

for a derivation proceeding pursuant to § 42.401 et

seq. of this title.

(d) Applications and patents to which this

section is applicable. The provisions of this section

apply to any application for patent, and to any patent

issuing thereon, that contains, or contained at any

time:

(1) A claim to a claimed invention that has

an effective ﬁling date as deﬁned in § 1.109 that is

on or after March 16, 2013; or

(2) A speciﬁc reference under 35 U.S.C.

120, 121, 365(c), or 386(c) to any patent or

application that contains, or contained at any time,

a claim to a claimed invention that has an effective

ﬁling date as deﬁned in § 1.109 that is on or after

March 16, 2013.

[Added, 61 FR 42790, Aug. 19, 1996, effective

Sept. 23, 1996; heading and para. (a) revised, 65 FR

57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b)

removed and reserved, 70 FR 1818, Jan. 11, 2005,

effective Dec. 10, 2004; revised, 78 FR 11024, Feb. 14,

2013, effective Mar. 16, 2013; para. (d) revised, 80 FR

17918, Apr. 2, 2015, effective May 13, 2015]

§ 1.131 Afﬁdavit or declaration of prior

invention or to disqualify commonly owned

patent or published application as prior art.

(a) When any claim of an application or a patent

under reexamination is rejected, the applicant or

patent owner may submit an appropriate oath or

declaration to establish invention of the subject

matter of the rejected claim prior to the effective

date of the reference or activity on which the

rejection is based. The effective date of a U.S.

patent, U.S. patent application publication, or

international application publication under PCT

Article 21(2) is the earlier of its publication date or

the date that it is effective as a reference under 35

U.S.C. 102(e) as in effect on March 15, 2013. Prior

invention may not be established under this section

in any country other than the United States, a

NAFTA country, or a WTO member country. Prior

invention may not be established under this section

before December 8, 1993, in a NAFTA country

other than the United States, or before January 1,

R-134January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.131

1996, in a WTO member country other than a

NAFTA country. Prior invention may not be

established under this section if either:

(1) The rejection is based upon a U.S. patent

or U.S. patent application publication of a pending

or patented application naming another inventor

which claims interfering subject matter as deﬁned

in § 41.203(a) of this chapter, in which case an

applicant may suggest an interference pursuant to

§ 41.202(a) of this chapter; or

(2) The rejection is based upon a statutory

bar.

(b) The showing of facts for an oath or

declaration under paragraph (a) of this section shall

be such, in character and weight, as to establish

reduction to practice prior to the effective date of

the reference, or conception of the invention prior

to the effective date of the reference coupled with

due diligence from prior to said date to a subsequent

reduction to practice or to the ﬁling of the

application. Original exhibits of drawings or records,

or photocopies thereof, must accompany and form

part of the afﬁdavit or declaration or their absence

must be satisfactorily explained.

under reexamination is rejected under 35 U.S.C.

103 as in effect on March 15, 2013, on a U.S. patent

or U.S. patent application publication which is not

prior art under 35 U.S.C. 102(b) as in effect on

March 15, 2013, and the inventions deﬁned by the

claims in the application or patent under

reexamination and by the claims in the patent or

published application are not identical but are not

patentably distinct, and the inventions are owned

by the same party, the applicant or owner of the

patent under reexamination may disqualify the

patent or patent application publication as prior art.

The patent or patent application publication can be

disqualiﬁed as prior art by submission of:

(1) A terminal disclaimer in accordance with

§ 1.321(c); and

(2) An oath or declaration stating that the

application or patent under reexamination and patent

or published application are currently owned by the

same party, and that the inventor named in the

application or patent under reexamination is the

prior inventor under 35 U.S.C. 104 as in effect on

March 15, 2013.

(d) The provisions of this section apply to any

application for patent and to any patent issuing

thereon, that contains, or contained at any time:

(1) A claim to an invention that has an

effective ﬁling date as deﬁned in § 1.109 that is

before March 16, 2013; or

(2) A speciﬁc reference under 35 U.S.C.

120, 121, 365(c), or 386(c) to any patent or

application that contains, or contained at any time,

a claim to an invention that has an effective ﬁling

date as deﬁned in § 1.109 that is before March 16,

2013.

(e) In an application for patent to which the

provisions of § 1.130 apply, and to any patent

issuing thereon, the provisions of this section are

applicable only with respect to a rejection under 35

U.S.C. 102(g) as in effect on March 15, 2013.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov.

26, 1969; para. (a), 48 FR 2713, Jan. 20, 1983, effective

Feb. 27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985,

effective May 8, 1985; 50 FR 11366, Mar. 21, 1985; 53

FR 23733, June 23, 1988, effective Sept. 12, 1988; para.

(a)(1) revised and para. (a)(2) added, 60 FR 21043, May

1, 1995, effective May 31, 1995; para. (a) revised, 61 FR

42790, Aug. 19, 1996, effective Sept. 23, 1996; heading

and para. (a) revised, 65 FR 54604, Sept. 8, 2000,

effective Sept. 8, 2000; para. (a) revised, 65 FR 57024,

Sept. 20, 2000, effective Nov. 29, 2000; para. (a)(1)

revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,

2004; para. (b) revised, 69 FR 56481, Sept. 21, 2004,

effective Oct. 21, 2004; para. (a) introductory text revised,

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012;

revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16,

2013; para. (a) revised, 78 FR 62368, Oct. 21, 2013,

effective Dec. 18, 2013; para. (d) revised, 80 FR 17918,

Apr. 2, 2015, effective May 13, 2015]

§ 1.132 Afﬁdavits or declarations traversing

rejections or objections.

When any claim of an application or a patent under

reexamination is rejected or objected to, any

evidence submitted to traverse the rejection or

objection on a basis not otherwise provided for must

be by way of an oath or declaration under this

section.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27,

1983; revised, 61 FR 42790, Aug. 19, 1996, effective

Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 2000,

January 2018R-135

§ 1.132CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

effective Sept. 8, 2000; revised 65 FR 57024, Sept. 20,

2000, effective Nov. 29, 2000]

INTERVIEWS

§ 1.133 Interviews.

(a)(1) Interviews with examiners concerning

applications and other matters pending before the

Ofﬁce must be conducted on Ofﬁce premises and

within Ofﬁce hours, as the respective examiners

may designate. Interviews will not be permitted at

any other time or place without the authority of the

Director.

(2) An interview for the discussion of the

patentability of a pending application will not occur

before the ﬁrst Ofﬁce action, unless the application

is a continuing or substitute application or the

examiner determines that such an interview would

advance prosecution of the application.

(3) The examiner may require that an

interview be scheduled in advance.

(b) In every instance where reconsideration is

requested in view of an interview with an examiner,

a complete written statement of the reasons

presented at the interview as warranting favorable

action must be ﬁled by the applicant. An interview

does not remove the necessity for reply to Ofﬁce

actions as speciﬁed in §§ 1.111 and 1.135.

[Para. (b) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; para. (a) revised, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(1) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para.

(a)(2) revised, 70 FR 56119, Sept. 26, 2005, effective

Nov. 25, 2005]

TIME FOR REPLY BY APPLICANT;

ABANDONMENT OF APPLICATION

§ 1.134 Time period for reply to an Ofﬁce

action.

An Ofﬁce action will notify the applicant of any

non-statutory or shortened statutory time period set

for reply to an Ofﬁce action. Unless the applicant

is notiﬁed in writing that a reply is required in less

than six months, a maximum period of six months

is allowed.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997]

§ 1.135 Abandonment for failure to reply

within time period.

(a) If an applicant of a patent application fails

to reply within the time period provided under §

1.134 and § 1.136, the application will become

abandoned unless an Ofﬁce action indicates

otherwise.

(b) Prosecution of an application to save it from

abandonment pursuant to paragraph (a) of this

section must include such complete and proper reply

as the condition of the application may require. The

admission of, or refusal to admit, any amendment

after ﬁnal rejection or any amendment not

responsive to the last action, or any related

proceedings, will not operate to save the application

from abandonment.

attempt to advance the application to ﬁnal action,

and is substantially a complete reply to the non-ﬁnal

Ofﬁce action, but consideration of some matter or

compliance with some requirement has been

inadvertently omitted, applicant may be given a new

time period for reply under § 1.134 to supply the

omission.

[Paras. (a), (b), and (c), 47 FR 41272, Sept. 17,

1982, effective Oct. 1, 1982; para. (d) deleted, 49 FR

555, Jan. 4, 1984, effective Apr. 1, 1984; revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997]

§ 1.136 Extensions of time.

(a)(1) If an applicant is required to reply

within a nonstatutory or shortened statutory time

period, applicant may extend the time period for

reply up to the earlier of the expiration of any

maximum period set by statute or ﬁve months after

the time period set for reply, if a petition for an

extension of time and the fee set in § 1.17(a) are

ﬁled, unless:

(i) Applicant is notiﬁed otherwise in an

Ofﬁce action;

(ii) The reply is a reply brief submitted

pursuant to § 41.41 of this title;

R-136January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.133

(iii) The reply is a request for an oral

hearing submitted pursuant to § 41.47(a) of this title;

(iv) The reply is to a decision by the

Patent Trial and Appeal Board pursuant to § 41.50

or § 41.52 of this chapter or to § 90.3 of this chapter;

(v) The application is involved in a

contested case (§ 41.101(a) of this title) or a

derivation proceeding (§ 42.4(b) of this title).

(2) The date on which the petition and the

fee have been ﬁled is the date for purposes of

determining the period of extension and the

corresponding amount of the fee. The expiration of

the time period is determined by the amount of the

fee paid. A reply must be ﬁled prior to the expiration

of the period of extension to avoid abandonment of

the application (§ 1.135), but in no situation may an

applicant reply later than the maximum time period

set by statute, or be granted an extension of time

under paragraph (b) of this section when the

provisions of paragraph (a) of this section are

available.

(3) A written request may be submitted in

an application that is an authorization to treat any

concurrent or future reply, requiring a petition for

an extension of time under this paragraph for its

timely submission, as incorporating a petition for

extension of time for the appropriate length of time.

An authorization to charge all required fees, fees

under § 1.17, or all required extension of time fees

will be treated as a constructive petition for an

extension of time in any concurrent or future reply

requiring a petition for an extension of time under

this paragraph for its timely submission. Submission

of the fee set forth in § 1.17(a) will also be treated

as a constructive petition for an extension of time

in any concurrent reply requiring a petition for an

extension of time under this paragraph for its timely

submission.

(b) When a reply cannot be ﬁled within the time

period set for such reply and the provisions of

paragraph (a) of this section are not available, the

period for reply will be extended only for sufﬁcient

cause and for a reasonable time speciﬁed. Any

request for an extension of time under this paragraph

must be ﬁled on or before the day on which such

reply is due, but the mere ﬁling of such a request

will not effect any extension under this paragraph.

In no situation can any extension carry the date on

which reply is due beyond the maximum time period

set by statute. Any request under this paragraph must

be accompanied by the petition fee set forth in §

1.17(g).

Allowability” that an application is otherwise in

condition for allowance, the following time periods

are not extendable if set in the “Notice of

Allowability” or in an Ofﬁce action having a mail

date on or after the mail date of the “Notice of

Allowability”:

(1) The period for submitting the inventor’s

oath or declaration;

(2) The period for submitting formal

drawings set under § 1.85(c); and

(3) The period for making a deposit set under

§ 1.809(c).

(d) See § 1.550(c) for extensions of time in ex

parte reexamination proceedings, § 1.956 for

extensions of time in inter partes reexamination

proceedings; §§ 41.4(a) and 41.121(a)(3) of this

chapter for extensions of time in contested cases

before the Patent Trial and Appeal Board; § 42.5(c)

of this chapter for extensions of time in trials before

the Patent Trial and Appeal Board; and § 90.3 of

this chapter for extensions of time to appeal to the

U.S. Court of Appeals for the Federal Circuit or to

commence a civil action.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; 49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984;

49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 54

FR 29551, July 13, 1989, effective Aug. 20, 1989; para.

(a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan.

3, 1994; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; para. (c) added, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; paras. (a)(2) and (b) revised, 65

FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (c)

revised, 66 FR 21090, Apr. 27, 2001, effective May 29,

2001; paras. (a)(1), (a)(2), and (b) revised, 69 FR 49959,

Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised,

69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004;

para. (b) revised, 70 FR 3880, Jan. 27, 2005, effective

Dec. 8, 2004; para. (a)(1) revised, 72 FR 46716, Aug.

21, 2007 (implementation enjoined and never became

effective); para. (a)(1) revised, 74 FR 52686, Oct. 14,

2009, effective Oct. 14, 2009 (to remove changes made

by the ﬁnal rules in 72 FR 46716 from the CFR); paras.

(a)(1)(iv), (a)(1)(v), (a)(2), and (b) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012; para. (c)(1)

revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16,

2012; paras. (a)(1)(iv), (a)(2) and (b) revised, para. (d)

January 2018R-137

§ 1.136CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

added, 78 FR 62368, Oct. 21, 2013, effective Dec. 18,

2013]

§ 1.137 Revival of abandoned application,

or terminated or limited reexamination

prosecution.

(a) Revival on the basis of unintentional delay.

If the delay in reply by applicant or patent owner

was unintentional, a petition may be ﬁled pursuant

to this section to revive an abandoned application

or a reexamination prosecution terminated under §

1.550(d) or § 1.957(b) or limited under § 1.957(c).

(b) Petition requirements. A grantable petition

pursuant to this section must be accompanied by:

(1) The reply required to the outstanding

Ofﬁce action or notice, unless previously ﬁled;

(2) The petition fee as set forth in § 1.17(m);

(3) Any terminal disclaimer (and fee as set

forth in § 1.20(d)) required pursuant to paragraph

(d) of this section; and

(4) A statement that the entire delay in ﬁling

the required reply from the due date for the reply

until the ﬁling of a grantable petition pursuant to

this section was unintentional. The Director may

require additional information where there is a

question whether the delay was unintentional.

§ 1.57(a), the reply must include a copy of the

speciﬁcation and any drawings of the previously

ﬁled application. In an application or patent

abandoned for failure to pay the issue fee or any

portion thereof, the required reply must include

payment of the issue fee or any outstanding balance.

In an application abandoned for failure to pay the

publication fee, the required reply must include

payment of the publication fee. In a nonprovisional

application abandoned for failure to prosecute, the

required reply may be met by the ﬁling of a

continuing application. In a nonprovisional utility

or plant application ﬁled on or after June 8, 1995,

abandoned after the close of prosecution as deﬁned

in § 1.114(b), the required reply may also be met

by the ﬁling of a request for continued examination

in compliance with § 1.114.

(d) Terminal disclaimer.

(1) Any petition to revive pursuant to this

section in a design application must be accompanied

by a terminal disclaimer and fee as set forth in §

1.321 dedicating to the public a terminal part of the

term of any patent granted thereon equivalent to the

period of abandonment of the application. Any

petition to revive pursuant to this section in either

a utility or plant application ﬁled before June 8,

1995, must be accompanied by a terminal disclaimer

and fee as set forth in § 1.321 dedicating to the

public a terminal part of the term of any patent

granted thereon equivalent to the lesser of:

(i) The period of abandonment of the

application; or

(ii) The period extending beyond twenty

years from the date on which the application for the

patent was ﬁled in the United States or, if the

application contains a speciﬁc reference to an earlier

ﬁled application(s) under 35 U.S.C. 120, 121,

365(c), or 386(c) from the date on which the earliest

such application was ﬁled.

(2) Any terminal disclaimer pursuant to

paragraph (d)(1) of this section must also apply to

any patent granted on a continuing utility or plant

application ﬁled before June 8, 1995, or a continuing

design application, that contains a speciﬁc reference

under 35 U.S.C. 120, 121, 365(c), or 386(c) to the

application for which revival is sought.

(3) The provisions of paragraph (d)(1) of

this section do not apply to applications for which

revival is sought solely for purposes of copendency

with a utility or plant application ﬁled on or after

June 8, 1995, to reissue applications, or to

reexamination proceedings.

(e) Request for reconsideration. Any request

for reconsideration or review of a decision refusing

to revive an abandoned application, or a terminated

or limited reexamination prosecution, upon petition

ﬁled pursuant to this section, to be considered

timely, must be ﬁled within two months of the

decision refusing to revive or within such time as

set in the decision. Unless a decision indicates

otherwise, this time period may be extended under:

(1) The provisions of § 1.136 for an

abandoned application;

(2) The provisions of § 1.550(c) for a

terminated ex parte reexamination prosecution,

where the ex parte reexamination was ﬁled under

§ 1.510; or

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.137

(3) The provisions of § 1.956 for a

terminated inter partes reexamination prosecution

or an inter partes reexamination limited as to further

prosecution, where the inter partes reexamination

was ﬁled under § 1.913.

(f) Abandonment for failure to notify the Ofﬁce

of a foreign ﬁling. A nonprovisional application

abandoned pursuant to 35 U.S.C. 122(b)(2)(B)(iii)

for failure to timely notify the Ofﬁce of the ﬁling

of an application in a foreign country or under a

multinational treaty that requires publication of

applications eighteen months after ﬁling, may be

revived pursuant to this section. The reply

requirement of paragraph (c) of this section is met

by the notiﬁcation of such ﬁling in a foreign country

or under a multinational treaty, but the ﬁling of a

petition under this section will not operate to stay

any period for reply that may be running against the

application.

(g) Provisional applications. A provisional

application, abandoned for failure to timely respond

to an Ofﬁce requirement, may be revived pursuant

to this section. Subject to the provisions of 35 U.S.C.

119(e)(3) and § 1.7(b), a provisional application

will not be regarded as pending after twelve months

from its ﬁling date under any circumstances.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; para. (b) 48 FR 2713, Jan. 20, 1983, effective Feb.

27, 1983; paras. (a) - (c), paras. (d) & (e) added, 58 FR

44277, Aug. 20,1993, effective Sept. 20, 1993; para. (c)

revised, 60 FR 20195, Apr. 25, 1995, effective June 8,

1995; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997; para. (c) revised, 65 FR 54604, Sept. 8, 2000,

effective Sept. 8, 2000; revised, 65 FR 57024, Sept. 20,

2000, effective Nov. 29, 2000; para. (d)(3) revised, 69

FR 56481, Sept. 21, 2004, effective Sept. 21, 2004;

heading, paras. (a) introductory text, (b) introductory text,

and (e) revised, 72 FR 18892, Apr. 16, 2007, effective

May 16, 2007; revised, 78 FR 62368, Oct. 21, 2013,

effective Dec. 18, 2013; paras. (d)(1)(ii) and (d)(2)

revised, 80 FR 17918, Apr. 2, 2015, effective May 13,

2015]

§ 1.138 Express abandonment.

(a) An application may be expressly abandoned

by ﬁling a written declaration of abandonment

identifying the application in the United States

Patent and Trademark Ofﬁce. Express abandonment

of the application may not be recognized by the

Ofﬁce before the date of issue or publication unless

it is actually received by appropriate ofﬁcials in time

to act.

(b) A written declaration of abandonment must

be signed by a party authorized under § 1.33(b)(1)

or (b)(3) to sign a paper in the application, except

as otherwise provided in this paragraph. A registered

attorney or agent, not of record, who acts in a

representative capacity under the provisions of §

1.34 when ﬁling a continuing application, may

expressly abandon the prior application as of the

ﬁling date granted to the continuing application.

application to avoid publication of the application

(see § 1.211(a)(1)) must submit a declaration of

express abandonment by way of a petition under

this paragraph including the fee set forth in § 1.17(h)

in sufﬁcient time to permit the appropriate ofﬁcials

to recognize the abandonment and remove the

application from the publication process. Applicants

should expect that the petition will not be granted

and the application will be published in regular

course unless such declaration of express

abandonment and petition are received by the

appropriate ofﬁcials more than four weeks prior to

the projected date of publication.

(d) An applicant seeking to abandon an

application ﬁled under 35 U.S.C. 111(a) and §

1.53(b) on or after December 8, 2004, to obtain a

refund of the search fee and excess claims fee paid

in the application, must submit a declaration of

express abandonment by way of a petition under

this paragraph before an examination has been made

of the application. The date indicated on any

certiﬁcate of mailing or transmission under § 1.8

will not be taken into account in determining

whether a petition under § 1.138(d) was ﬁled before

an examination has been made of the application.

If a request for refund of the search fee and excess

claims fee paid in the application is not ﬁled with

the declaration of express abandonment under this

paragraph or within two months from the date on

which the declaration of express abandonment under

this paragraph was ﬁled, the Ofﬁce may retain the

entire search fee and excess claims fee paid in the

application. This two-month period is not

extendable. If a petition and declaration of express

abandonment under this paragraph are not ﬁled

before an examination has been made of the

application, the Ofﬁce will not refund any part of

January 2018R-139

§ 1.138CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

the search fee and excess claims fee paid in the

application except as provided in § 1.26.

[47 FR 47244, Oct. 25, 1982, effective Feb. 27,

1983; 49 FR 48416, Dec. 12, 1984, effective Feb. 11,

1985; revised, 65 FR 54604, Sept. 8, 2000, effective Nov.

7, 2000; para. (a) revised and para. (c) added, 65 FR

57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c)

revised and para. (d) added, 71 FR 12284, Mar. 10, 2006,

effective Mar. 10, 2006; para. (b) revised, 78 FR 62368,

Oct. 21, 2013, effective Dec. 18, 2013]

§ 1.139 [Reserved]

[Added, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; removed and reserved, 62 FR 53132, Oct.

10, 1997, effective Dec. 1, 1997]

JOINDER OF INVENTIONS IN ONE

APPLICATION; RESTRICTION

§ 1.141 Different inventions in one national

application.

(a) Two or more independent and distinct

inventions may not be claimed in one national

application, except that more than one species of an

invention, not to exceed a reasonable number, may

be speciﬁcally claimed in different claims in one

national application, provided the application also

includes an allowable claim generic to all the

claimed species and all the claims to species in

excess of one are written in dependent form (§ 1.75)

or otherwise include all the limitations of the generic

claim.

(b) Where claims to all three categories, product,

process of making, and process of use, are included

in a national application, a three way requirement

for restriction can only be made where the process

of making is distinct from the product. If the process

of making and the product are not distinct, the

process of using may be joined with the claims

directed to the product and the process of making

the product even though a showing of distinctness

between the product and process of using the

product can be made.

[52 FR 20046, May 28, 1987, effective July 1,

1987]

§ 1.142 Requirement for restriction.

(a) If two or more independent and distinct

inventions are claimed in a single application, the

examiner in an Ofﬁce action will require the

applicant in the reply to that action to elect an

invention to which the claims will be restricted, this

ofﬁcial action being called a requirement for

restriction (also known as a requirement for

division). Such requirement will normally be made

before any action on the merits; however, it may be

made at any time before ﬁnal action.

(b) Claims to the invention or inventions not

elected, if not canceled, are nevertheless withdrawn

from further consideration by the examiner by the

election, subject however to reinstatement in the

event the requirement for restriction is withdrawn

or overruled.

[Para (a) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; para. (a) revised and (c) added,

72 FR 46716, Aug. 21, 2007 (implementation enjoined

and never became effective); para. (a) revised and (c)

removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14,

2009 (to remove changes made by the ﬁnal rules in 72

FR 46716 from the CFR)]

§ 1.143 Reconsideration of requirement.

If the applicant disagrees with the requirement for

restriction, he may request reconsideration and

withdrawal or modiﬁcation of the requirement,

giving the reasons therefor. (See § 1.111.) In

requesting reconsideration the applicant must

indicate a provisional election of one invention for

prosecution, which invention shall be the one elected

in the event the requirement becomes ﬁnal. The

requirement for restriction will be reconsidered on

such a request. If the requirement is repeated and

made ﬁnal, the examiner will at the same time act

on the claims to the invention elected.

§ 1.144 Petition from requirement for

restriction.

After a ﬁnal requirement for restriction, the

applicant, in addition to making any reply due on

the remainder of the action, may petition the

Director to review the requirement. Petition may be

deferred until after ﬁnal action on or allowance of

R-140January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.139

claims to the invention elected, but must be ﬁled

not later than appeal. A petition will not be

considered if reconsideration of the requirement was

not requested (see § 1.181).

[Revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

§ 1.145 Subsequent presentation of claims

for different invention.

If, after an ofﬁce action on an application, the

applicant presents claims directed to an invention

distinct from and independent of the invention

previously claimed, the applicant will be required

to restrict the claims to the invention previously

claimed if the amendment is entered, subject to

reconsideration and review as provided in §§ 1.143

and 1.144.

[Revised, 72 FR 46716, Aug. 21, 2007

(implementation enjoined and never became effective);

revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14,

2009 (to remove changes made by the ﬁnal rules in 72

FR 46716 from the CFR)]

§ 1.146 Election of species.

In the ﬁrst action on an application containing a

generic claim to a generic invention (genus) and

claims to more than one patentably distinct species

embraced thereby, the examiner may require the

applicant in the reply to that action to elect a species

of his or her invention to which his or her claim will

be restricted if no claim to the genus is found to be

allowable. However, if such application contains

claims directed to more than a reasonable number

of species, the examiner may require restriction of

the claims to not more than a reasonable number of

species before taking further action in the

application.

[43 FR 20465, May 11, 1978; revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997]

DESIGN PATENTS

§ 1.151 Rules applicable.

The rules relating to applications for patents for

other inventions or discoveries are also applicable

to applications for patents for designs except as

otherwise provided.

§ 1.152 Design drawings.

The design must be represented by a drawing that

complies with the requirements of § 1.84 and must

contain a sufﬁcient number of views to constitute a

complete disclosure of the appearance of the design.

Appropriate and adequate surface shading should

be used to show the character or contour of the

surfaces represented. Solid black surface shading is

not permitted except when used to represent the

color black as well as color contrast. Broken lines

may be used to show visible environmental

structure, but may not be used to show hidden planes

and surfaces that cannot be seen through opaque

materials. Alternate positions of a design

component, illustrated by full and broken lines in

the same view are not permitted in a design drawing.

Photographs and ink drawings are not permitted to

be combined as formal drawings in one application.

Photographs submitted in lieu of ink drawings in

design patent applications must not disclose

environmental structure but must be limited to the

design claimed for the article.

[53 FR 47810, Nov. 28, 1988, effective Jan. 1,

1989; amended, 58 FR 38719, July 20, 1993, effective

Oct. 1, 1993; revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8,

2000, effective Sept. 8, 2000]

§ 1.153 Title, description and claim, oath or

declaration.

[Editor Note: Para. (b) below is applicable only to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after September 16, 2012*]

(a) The title of the design must designate the

particular article. No description, other than a

reference to the drawing, is ordinarily required. The

claim shall be in formal terms to the ornamental

design for the article (specifying name) as shown,

January 2018R-141

§ 1.153CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

or as shown and described. More than one claim is

neither required nor permitted.

(b) The inventor’s oath or declaration must

comply with the requirements of § 1.63, or comply

with the requirements of § 1.64 for a substitute

statement.

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec.

29, 1964; para. (b), 48 FR 2712, Jan. 20, 1983, effective

Feb. 27, 1983; para. (b) revised, 77 FR 48776, Aug. 14,

2012, effective Sept. 16, 2012]

[*The changes to para. (b) effective Sept. 16, 2012

are applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.153 (pre-AIA) for para. (b) otherwise in effect.]

§ 1.153 (pre-AIA) Title, description and

claim, oath or declaration.

[Editor Note: Para. (b) below is not applicable to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after Sept. 16, 2012*]

(a) The title of the design must designate the

particular article. No description, other than a

reference to the drawing, is ordinarily required. The

claim shall be in formal terms to the ornamental

design for the article (specifying name) as shown,

or as shown and described. More than one claim is

neither required nor permitted.

(b) The oath or declaration required of the

applicant must comply with § 1.63.

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec.

29, 1964; para. (b), 48 FR 2712, Jan. 20, 1983, effective

Feb. 27, 1983]

[*See § 1.153 for more information and for para.

(b) applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.154 Arrangement of application elements

in a design application.

(a) The elements of the design application, if

applicable, should appear in the following order:

(1) Design application transmittal form.

(2) Fee transmittal form.

(3) Application data sheet (see § 1.76).

(4) Speciﬁcation.

(5) Drawings or photographs.

(6) The inventor’s oath or declaration (see

§ 1.153(b)).

(b) The speciﬁcation should include the

following sections in order:

(1) Preamble, stating the name of the

applicant, title of the design, and a brief description

of the nature and intended use of the article in which

the design is embodied.

(2) Cross-reference to related applications

(unless included in the application data sheet).

(3) Statement regarding federally sponsored

research or development.

(4) Description of the ﬁgure or ﬁgures of

the drawing.

(5) Feature description.

(6) A single claim.

in paragraph (b) of this section, if applicable, should

be preceded by a section heading in uppercase letters

without underlining or bold type.

[24 FR 10332, Dec. 22, 1959, para. (e), 48 FR

2713, Jan. 20, 1983, effective date Feb. 27, 1983; revised,

61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;

para. (a)(3) revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; para. (a)(6) revised, 77 FR 48776,

Aug. 14, 2012, effective Sept. 16, 2012]

§ 1.155 Expedited examination of design

applications.

(a) The applicant may request that the Ofﬁce

expedite the examination of a design application.

To qualify for expedited examination:

(1) The application must include drawings

in compliance with § 1.84, or for an international

design application that designates the United States,

must have been published pursuant to Hague

Agreement Article 10(3);

(2) The applicant must have conducted a

preexamination search; and

(3) The applicant must ﬁle a request for

expedited examination including:

(i) The fee set forth in § 1.17(k); and

(ii) A statement that a preexamination

search was conducted. The statement must also

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.153 (pre-AIA)

indicate the ﬁeld of search and include an

information disclosure statement in compliance with

§ 1.98.

(b) The Ofﬁce will not examine an application

that is not in condition for examination (e.g., missing

basic ﬁling fee) even if the applicant ﬁles a request

for expedited examination under this section.

[47 FR 41272, Sept. 17, 1982, effective date Oct.

1, 1982; paras. (b)-(d) amended, paras. (e) and (f) added,

58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993;

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept.

8, 2000; para. (a)(1) revised, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

PLANT PATENTS

§ 1.161 Rules applicable.

The rules relating to applications for patent for other

inventions or discoveries are also applicable to

applications for patents for plants except as

otherwise provided.

§ 1.162 Applicant, oath or declaration.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

The inventor named for a plant patent application

must be the person who has invented or discovered

and asexually reproduced the new and distinct

variety of plant for which a patent is sought. The

inventor’s oath or declaration, in addition to the

averments required by § 1.63 or § 1.64, must state

that the inventor has asexually reproduced the plant.

Where the plant is a newly found plant, the

inventor’s oath or declaration must also state that it

was found in a cultivated area.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27,

1983; revised, 77 FR 48776, Aug. 14, 2012, effective

Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.162 (pre-AIA) for the rule otherwise in effect.]

§ 1.162 (pre-AIA) Applicant, oath or

declaration.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

The applicant for a plant patent must be the person

who has invented or discovered and asexually

reproduced the new and distinct variety of plant for

which a patent is sought (or as provided in §§ 1.42,

1.43, and 1.47). The oath or declaration required of

the applicant, in addition to the averments required

by § 1.63, must state that he or she has asexually

reproduced the plant. Where the plant is a newly

found plant the oath or declaration must also state

that it was found in a cultivated area.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27,

1983]

[*See § 1.162 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.163 Speciﬁcation and arrangement of

application elements in a plant application.

(a) The speciﬁcation must contain as full and

complete a disclosure as possible of the plant and

the characteristics thereof that distinguish the same

over related known varieties, and its antecedents,

and must particularly point out where and in what

manner the variety of plant has been asexually

reproduced. For a newly found plant, the

speciﬁcation must particularly point out the location

and character of the area where the plant was

discovered.

(b) The elements of the plant application, if

applicable, should appear in the following order:

(1) Plant application transmittal form.

(2) Fee transmittal form.

(3) Application data sheet (see § 1.76).

(4) Speciﬁcation.

(5) Drawings (in duplicate).

(6) The inventor’s oath or declaration (§

1.162).

following sections in order:

January 2018R-143

§ 1.163CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) Title of the invention, which may include

an introductory portion stating the name, citizenship,

and residence of the applicant.

(2) Cross-reference to related applications

(unless included in the application data sheet).

(3) Statement regarding federally sponsored

research or development.

(4) Latin name of the genus and species of

the plant claimed.

(5) Variety denomination.

(6) Background of the invention.

(7) Brief summary of the invention.

(8) Brief description of the drawing.

(9) Detailed botanical description.

(10) A single claim.

(11) Abstract of the disclosure.

(d) The text of the speciﬁcation or sections

deﬁned in paragraph (c) of this section, if applicable,

should be preceded by a section heading in upper

case, without underlining or bold type.

[24 FR 10332, Dec. 22, 1959; para. (b), 48 FR

2713, Jan. 20, 1983, effective Feb. 27, 1983; paras. (c)

and (d) added, 61 FR 42790, Aug. 19, 1996, effective

Sept. 23, 1996; para. (b) revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept.

8, 2000, effective Nov. 7, 2000; para. (b)(6) revised, 77

FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

§ 1.164 Claim.

The claim shall be in formal terms to the new and

distinct variety of the speciﬁed plant as described

and illustrated, and may also recite the principal

distinguishing characteristics. More than one claim

is not permitted.

§ 1.165 Plant Drawings.

(a) Plant patent drawings should be artistically

and competently executed and must comply with

the requirements of § 1.84. View numbers and

reference characters need not be employed unless

required by the examiner. The drawing must disclose

all the distinctive characteristics of the plant capable

of visual representation.

(b) The drawings may be in color. The drawing

must be in color if color is a distinguishing

characteristic of the new variety. Two copies of

color drawings or photographs must be submitted.

[24 FR 10332, Dec. 22, 1959; para. (b), 47 FR

41272, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a)

and (b) amended, 58 FR 38719, July 20, 1993, effective

Oct. 1, 1993; para. (b) revised, 65 FR 57024, Sept. 20,

2000, effective Nov. 29, 2000; para. (b) revised, 69 FR

56481, Sept. 21, 2004, effective Oct. 21, 2004]

§ 1.166 Specimens.

The applicant may be required to furnish specimens

of the plant, or its ﬂower or fruit, in a quantity and

at a time in its stage of growth as may be designated,

for study and inspection. Such specimens, properly

packed, must be forwarded in conformity with

instructions furnished to the applicant. When it is

not possible to forward such specimens, plants must

be made available for ofﬁcial inspection where

grown.

§ 1.167 Examination.

Applications may be submitted by the Patent and

Trademark Ofﬁce to the Department of Agriculture

for study and report.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov.

26, 1969; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997]

REISSUES

§ 1.171 Application for reissue.

An application for reissue must contain the same

parts required for an application for an original

patent, complying with all the rules relating thereto

except as otherwise provided, and in addition, must

comply with the requirements of the rules relating

to reissue applications.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; revised, 54 FR 6893, Feb. 17, 1989, 54 FR 9432,

March 7, 1989, effective Apr. 17, 1989; 56 FR 65142,

Dec. 13, 1991, effective Dec. 16, 1991; revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997]

R-144January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.164

§ 1.172 Reissue applicant.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) The reissue applicant is the original patentee,

or the current patent owner if there has been an

assignment. A reissue application must be

accompanied by the written consent of all assignees,

if any, currently owning an undivided interest in the

patent. All assignees consenting to the reissue must

establish their ownership in the patent by ﬁling in

the reissue application a submission in accordance

with the provisions of § 3.73(c) of this chapter.

(b) A reissue will be granted to the original

patentee, his legal representatives or assigns as the

interest may appear.

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR

2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; revised, 77 FR 48776, Aug. 14, 2012, effective

Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.172 (pre-AIA) for the rule otherwise in effect.]

§ 1.172 (pre-AIA) Applicants, assignees.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after Sept. 16,

2012*]

(a) A reissue oath must be signed and sworn to

or declaration made by the inventor or inventors

except as otherwise provided (see §§ 1.42, 1.43,

1.47), and must be accompanied by the written

consent of all assignees, if any, owning an undivided

interest in the patent, but a reissue oath may be made

and sworn to or declaration made by the assignee

of the entire interest if the application does not seek

to enlarge the scope of the claims of the original

patent. All assignees consenting to the reissue must

establish their ownership interest in the patent by

ﬁling in the reissue application a submission in

accordance with the provisions of § 3.73(b) of this

chapter.

(b) A reissue will be granted to the original

patentee, his legal representatives or assigns as the

interest may appear.

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR

2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997]

[*See § 1.172 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.173 Reissue speciﬁcation, drawings, and

amendments.

(a) Contents of a reissue application. An

application for reissue must contain the entire

speciﬁcation, including the claims, and the drawings

of the patent. No new matter shall be introduced

into the application. No reissue patent shall be

granted enlarging the scope of the claims of the

original patent unless applied for within two years

from the grant of the original patent, pursuant to 35

U.S.C. 251.

(1) Speciﬁcation, including claims. The

entire speciﬁcation, including the claims, of the

patent for which reissue is requested must be

furnished in the form of a copy of the printed patent,

in double column format, each page on only one

side of a single sheet of paper. If an amendment of

the reissue application is to be included, it must be

made pursuant to paragraph (b) of this section. The

formal requirements for papers making up the

reissue application other than those set forth in this

section are set out in § 1.52. Additionally, a copy

of any disclaimer (§ 1.321), certiﬁcate of correction

(§§ 1.322 through 1.324), or reexamination

certiﬁcate (§ 1.570) issued in the patent must be

included. (See also § 1.178).

(2) Drawings. Applicant must submit a

clean copy of each drawing sheet of the printed

patent at the time the reissue application is ﬁled. If

such copy complies with § 1.84, no further drawings

will be required. Where a drawing of the reissue

application is to include any changes relative to the

patent being reissued, the changes to the drawing

must be made in accordance with paragraph (b)(3)

of this section. The Ofﬁce will not transfer the

drawings from the patent ﬁle to the reissue

application.

(b) Making amendments in a reissue

application. An amendment in a reissue application

is made either by physically incorporating the

changes into the speciﬁcation when the application

January 2018R-145

§ 1.173CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

is ﬁled, or by a separate amendment paper. If

amendment is made by incorporation, markings

pursuant to paragraph (d) of this section must be

used. If amendment is made by an amendment

paper, the paper must direct that speciﬁed changes

be made, as follows:

(1) Speciﬁcation other than the claims.

Changes to the speciﬁcation, other than to the

claims, must be made by submission of the entire

text of an added or rewritten paragraph, including

markings pursuant to paragraph (d) of this section,

except that an entire paragraph may be deleted by

a statement deleting the paragraph without

presentation of the text of the paragraph. The precise

point in the speciﬁcation must be identiﬁed where

any added or rewritten paragraph is located. This

paragraph applies whether the amendment is

submitted on paper or compact disc (see §§

1.52(e)(1) and 1.821(c), but not for discs submitted

under § 1.821(e)).

(2) Claims. An amendment paper must

include the entire text of each claim being changed

by such amendment paper and of each claim being

added by such amendment paper. For any claim

changed by the amendment paper, a parenthetical

expression “amended,” “twice amended,” etc.,

should follow the claim number. Each changed

patent claim and each added claim must include

markings pursuant to paragraph (d) of this section,

except that a patent claim or added claim should be

canceled by a statement canceling the claim without

presentation of the text of the claim.

(3) Drawings. One or more patent drawings

shall be amended in the following manner: Any

changes to a patent drawing must be submitted as

a replacement sheet of drawings which shall be an

attachment to the amendment document. Any

replacement sheet of drawings must be in

compliance with § 1.84 and shall include all of the

ﬁgures appearing on the original version of the

sheet, even if only one ﬁgure is amended. Amended

ﬁgures must be identiﬁed as “Amended,” and any

added ﬁgure must be identiﬁed as “New.” In the

event that a ﬁgure is canceled, the ﬁgure must be

surrounded by brackets and identiﬁed as “Canceled.”

All changes to the drawing(s) shall be explained, in

detail, beginning on a separate sheet accompanying

the papers including the amendment to the drawings.

(i) A marked-up copy of any amended

drawing ﬁgure, including annotations indicating the

changes made, may be included. The marked-up

copy must be clearly labeled as “Annotated

Marked-up Drawings” and must be presented in the

amendment or remarks section that explains the

change to the drawings.

(ii) A marked-up copy of any amended

drawing ﬁgure, including annotations indicating the

changes made, must be provided when required by

the examiner.

changes. Whenever there is an amendment to the

claims pursuant to paragraph (b) of this section,

there must also be supplied, on pages separate from

the pages containing the changes, the status (i.e.,

pending or canceled), as of the date of the

amendment, of all patent claims and of all added

claims, and an explanation of the support in the

disclosure of the patent for the changes made to the

claims.

(d) Changes shown by markings. Any changes

relative to the patent being reissued which are made

to the speciﬁcation, including the claims, upon

ﬁling, or by an amendment paper in the reissue

application, must include the following markings:

(1) The matter to be omitted by reissue must

be enclosed in brackets; and

(2) The matter to be added by reissue must

be underlined, except for amendments submitted on

compact discs (§§ 1.96 and 1.821(c)). Matter added

by reissue on compact discs must be preceded with

“<U>” and end with “</U>” to properly identify

the material being added.

(e) Numbering of patent claims preserved.

Patent claims may not be renumbered. The

numbering of any claim added in the reissue

application must follow the number of the highest

numbered patent claim.

(f) Amendment of disclosure may be required.

The disclosure must be amended, when required by

the Ofﬁce, to correct inaccuracies of description and

deﬁnition, and to secure substantial correspondence

between the claims, the remainder of the

speciﬁcation, and the drawings.

(g) Amendments made relative to the patent.

All amendments must be made relative to the patent

speciﬁcation, including the claims, and drawings,

R-146January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.173

which are in effect as of the date of ﬁling of the

reissue application.

[Revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; para. (b)(3) revised, 68 FR 38611, June

30, 2003, effective July 30, 2003; para. (b) introductory

text revised, 69 FR 56481, Sept. 21, 2004, effective Oct.

21, 2004]

§ 1.174 [Reserved]

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR

2713, Jan. 20, 1983, effective Feb. 27, 1983; removed

and reserved, 65 FR 54604, Sept. 8, 2000, effective Nov.

7, 2000]

§ 1.175 Inventor’s oath or declaration for a

reissue application.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111, 363, or 385 on or after

September 16, 2012*]

(a) The inventor’s oath or declaration for a

reissue application, in addition to complying with

the requirements of § 1.63, § 1.64, or § 1.67, must

also speciﬁcally identify at least one error pursuant

to 35 U.S.C. 251 being relied upon as the basis for

reissue and state that the applicant believes the

original patent to be wholly or partly inoperative or

invalid by reason of a defective speciﬁcation or

drawing, or by reason of the patentee claiming more

or less than the patentee had the right to claim in

the patent.

(b) If the reissue application seeks to enlarge

the scope of the claims of the patent (a basis for the

reissue is the patentee claiming less than the patentee

had the right to claim in the patent), the inventor’s

oath or declaration for a reissue application must

identify a claim that the application seeks to

broaden. A claim is a broadened claim if the claim

is broadened in any respect.

joint inventor of a claimed invention, in a reissue

application must execute an oath or declaration for

the reissue application, except as provided for in §

1.64, and except that the inventor’s oath or

declaration for a reissue application may be signed

by the assignee of the entire interest if:

(1) The application does not seek to enlarge

the scope of the claims of the original patent; or

(2) The application for the original patent

was ﬁled under § 1.46 by the assignee of the entire

interest.

(d) If errors previously identiﬁed in the

inventor’s oath or declaration for a reissue

application pursuant to paragraph (a) of this section

are no longer being relied upon as the basis for

reissue, the applicant must identify an error being

relied upon as the basis for reissue.

(e) The inventor’s oath or declaration for a

reissue application required by paragraph (a) of this

section may be submitted under the provisions of §

1.53(f), except that the provisions of § 1.53(f)(3) do

not apply to a reissue application.

(f)(1) The requirement for the inventor’s

oath or declaration for a continuing reissue

application that claims the beneﬁt under 35 U.S.C.

120, 121, 365(c), or 386(c) in compliance with §

1.78 of an earlier-ﬁled reissue application may be

satisﬁed by a copy of the inventor’s oath or

declaration from the earlier-ﬁled reissue application,

provided that:

(i) The inventor, or each individual who

is a joint inventor of a claimed invention, in the

reissue application executed an inventor’s oath or

declaration for the earlier-ﬁled reissue application,

except as provided for in § 1.64;

(ii) The continuing reissue application

does not seek to enlarge the scope of the claims of

the original patent; or

(iii) The application for the original

patent was ﬁled under § 1.46 by the assignee of the

entire interest.

(2) If all errors identiﬁed in the inventor’s

oath or declaration from the earlier-ﬁled reissue

application are no longer being relied upon as the

basis for reissue, the applicant must identify an error

being relied upon as the basis for reissue.

(g) An oath or declaration ﬁled at any time

pursuant to 35 U.S.C. 115(h)(1), will be placed in

the ﬁle record of the reissue application, but may

not necessarily be reviewed by the Ofﬁce.

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec.

29, 1964; 34 FR 18857, Nov. 26, 1969; para. (a), 47 FR

21752, May 19, 1982, effective July 1,1982; para. (a),

48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para.

(a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar. 16,

1992; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

January 2018R-147

§ 1.175CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1, 1997; para. (e) added, 69 FR 56481, Sept. 21, 2004,

effective Oct. 21, 2004; revised, 77 FR 48776, Aug. 14,

2012, effective Sept. 16, 2012; para. (f)(1) introductory

text revised, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

[*The changes effective Sept. 16, 2012 and May

13, 2015 are applicable only to patent applications ﬁled

under 35 U.S.C. 111, 363, or 385 on or after September

16, 2012. See § 1.175 (pre-AIA) for the rule otherwise

in effect.]

§ 1.175 (pre-AIA) Reissue oath or

declaration.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111, 363, or 385 on or after Sept.

16, 2012*]

(a) The reissue oath or declaration in addition

to complying with the requirements of § 1.63, must

also state that:

(1) The applicant believes the original patent

to be wholly or partly inoperative or invalid by

reason of a defective speciﬁcation or drawing, or

by reason of the patentee claiming more or less than

the patentee had the right to claim in the patent,

stating at least one error being relied upon as the

basis for reissue; and

(2) All errors being corrected in the reissue

application up to the time of ﬁling of the oath or

declaration under this paragraph arose without any

deceptive intention on the part of the applicant.

(b)(1) For any error corrected, which is not

covered by the oath or declaration submitted under

paragraph (a) of this section, applicant must submit

a supplemental oath or declaration stating that every

such error arose without any deceptive intention on

the part of the applicant. Any supplemental oath or

declaration required by this paragraph must be

submitted before allowance and may be submitted:

(i) With any amendment prior to

allowance; or

(ii) In order to overcome a rejection

under 35 U.S.C. 251 made by the examiner where

it is indicated that the submission of a supplemental

oath or declaration as required by this paragraph

will overcome the rejection.

(2) For any error sought to be corrected after

allowance, a supplemental oath or declaration must

accompany the requested correction stating that the

error(s) to be corrected arose without any deceptive

intention on the part of the applicant.

reissue is based, as set forth in paragraph (a)(1),

unless all errors previously stated in the oath or

declaration are no longer being corrected, a

subsequent oath or declaration under paragraph (b)

of this section need not speciﬁcally identify any

other error or errors being corrected.

(d) The oath or declaration required by

paragraph (a) of this section may be submitted under

the provisions of § 1.53(f).

(e) The ﬁling of any continuing reissue

application which does not replace its parent reissue

application must include an oath or declaration

which, pursuant to paragraph (a)(1) of this section,

identiﬁes at least one error in the original patent

which has not been corrected by the parent reissue

application or an earlier reissue application. All

other requirements relating to oaths or declarations

must also be met.

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec.

29, 1964; 34 FR 18857, Nov. 26, 1969; para. (a), 47 FR

21752, May 19, 1982, effective July 1,1982; para. (a),

48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para.

(a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar. 16,

1992; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997; para. (e) added, 69 FR 56481, Sept. 21, 2004,

effective Oct. 21, 2004]

[*See § 1.175 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111, 363, or 385 on or after September 16, 2012]

§ 1.176 Examination of reissue.

(a) A reissue application will be examined in

the same manner as a non-reissue, non-provisional

application, and will be subject to all the

requirements of the rules related to non-reissue

applications. Applications for reissue will be acted

on by the examiner in advance of other applications.

(b) Restriction between subject matter of the

original patent claims and previously unclaimed

subject matter may be required (restriction involving

only subject matter of the original patent claims will

not be required). If restriction is required, the subject

matter of the original patent claims will be held to

be constructively elected unless a disclaimer of all

the patent claims is ﬁled in the reissue application,

which disclaimer cannot be withdrawn by applicant.

R-148January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.175 (pre-AIA)

[42 FR 5595, Jan. 28, 1977; revised, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000]

§ 1.177 Issuance of multiple reissue patents.

(a) The Ofﬁce may reissue a patent as multiple

reissue patents. If applicant ﬁles more than one

application for the reissue of a single patent, each

such application must contain or be amended to

contain in the ﬁrst sentence of the speciﬁcation a

notice stating that more than one reissue application

has been ﬁled and identifying each of the reissue

applications by relationship, application number and

ﬁling date. The Ofﬁce may correct by certiﬁcate of

correction under § 1.322 any reissue patent resulting

from an application to which this paragraph applies

that does not contain the required notice.

(b) If applicant ﬁles more than one application

for the reissue of a single patent, each claim of the

patent being reissued must be presented in each of

the reissue applications as an amended, unamended,

or canceled (shown in brackets) claim, with each

such claim bearing the same number as in the patent

being reissued. The same claim of the patent being

reissued may not be presented in its original

unamended form for examination in more than one

of such multiple reissue applications. The numbering

of any added claims in any of the multiple reissue

applications must follow the number of the highest

numbered original patent claim.

by itself fails to correct an error in the original patent

as required by 35 U.S.C. 251 but is otherwise in

condition for allowance, the Ofﬁce may suspend

action in the allowable application until all issues

are resolved as to at least one of the remaining

reissue applications. The Ofﬁce may also merge

two or more of the multiple reissue applications into

a single reissue application. No reissue application

containing only unamended patent claims and not

correcting an error in the original patent will be

passed to issue by itself.

[47 FR 41272, Sept. 17, 1982, effective date Oct.

1, 1982; revised, 54 FR 6893, Feb. 15, 1989, 54 FR 9432,

March 7, 1989, effective Apr. 17, 1989; revised, 60 FR

20195, Apr. 25, 1995, effective June 8, 1995; revised, 65

FR 54604, Sept. 8, 2000, effective Nov. 7, 2000]

§ 1.178 Original patent; continuing duty of

applicant.

(a) The application for reissue of a patent shall

constitute an offer to surrender that patent, and the

surrender shall take effect upon reissue of the patent.

Until a reissue application is granted, the original

patent shall remain in effect.

(b) In any reissue application before the Ofﬁce,

the applicant must call to the attention of the Ofﬁce

any prior or concurrent proceedings in which the

patent (for which reissue is requested) is or was

involved, such as interferences or trials before the

Patent Trial and Appeal Board, reissues,

reexaminations, or litigations and the results of such

proceedings (see also § 1.173(a)(1)).

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov.

26, 1969; revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; para. (a) revised, 69 FR 56481, Sept. 21,

2004, effective Sept. 21, 2004; para. (b) revised, 77 FR

46615, Aug. 6, 2012, effective Sept. 16, 2012]

§ 1.179 [Reserved]

[Removed and reserved, 69 FR 56481, Sept. 21,

2004, effective Oct. 21, 2004]

PETITIONS AND ACTION BY THE

DIRECTOR

§ 1.181 Petition to the Director.

(a) Petition may be taken to the Director:

(1) From any action or requirement of any

examiner in the ex parte prosecution of an

application, or in ex parte or inter partes

prosecution of a reexamination proceeding which

is not subject to appeal to the Patent Trial and

Appeal Board or to the court;

(2) In cases in which a statute or the rules

specify that the matter is to be determined directly

by or reviewed by the Director; and

(3) To invoke the supervisory authority of

the Director in appropriate circumstances. For

petitions involving action of the Patent Trial and

Appeal Board, see § 41.3 of this title.

(b) Any such petition must contain a statement

of the facts involved and the point or points to be

reviewed and the action requested. Briefs or

January 2018R-149

§ 1.181CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

memoranda, if any, in support thereof should

accompany or be embodied in the petition; and

where facts are to be proven, the proof in the form

of afﬁdavits or declarations (and exhibits, if any)

must accompany the petition.

requirement of an examiner in the ex parte

prosecution of an application, or in the ex parte or

inter partes prosecution of a reexamination

proceeding, it may be required that there have been

a proper request for reconsideration (§ 1.111) and

a repeated action by the examiner. The examiner

may be directed by the Director to furnish a written

statement, within a speciﬁed time, setting forth the

reasons for his or her decision upon the matters

averred in the petition, supplying a copy to the

petitioner.

(d) Where a fee is required for a petition to the

Director the appropriate section of this part will so

indicate. If any required fee does not accompany

the petition, the petition will be dismissed.

(e) Oral hearing will not be granted except when

considered necessary by the Director.

(f) The mere ﬁling of a petition will not stay

any period for reply that may be running against the

application, nor act as a stay of other proceedings.

Any petition under this part not ﬁled within two

months of the mailing date of the action or notice

from which relief is requested may be dismissed as

untimely, except as otherwise provided. This

two-month period is not extendable.

(g) The Director may delegate to appropriate

Patent and Trademark Ofﬁce ofﬁcials the

determination of petitions.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov.

26, 1969; paras. (d) and (g), 47 FR 41272, Sept. 17, 1982,

effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12,

1984, effective Feb. 11, 1985; para. (f) revised, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)

and (c) revised, 65 FR 76756, Dec. 7, 2000, effective

Feb. 5, 2001; paras. (a), (a)(2)-(3), (c)-(e) & (g) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para.

(a)(3) revised, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; paras. (a)(1) and (a)(3) revised, 77 FR

46615, Aug. 6, 2012, effective Sept. 16, 2012]

§ 1.182 Questions not speciﬁcally provided

for.

All situations not speciﬁcally provided for in the

regulations of this part will be decided in accordance

with the merits of each situation by or under the

authority of the Director, subject to such other

requirements as may be imposed, and such decision

will be communicated to the interested parties in

writing. Any petition seeking a decision under this

section must be accompanied by the petition fee set

forth in § 1.17(f).

[47 FR 41272, Sept. 17, 1982, effective date Oct.

1, 1982; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; revised, 69 FR 56481, Sept. 21,

2004, effective Nov. 22, 2004]

§ 1.183 Suspension of rules.

In an extraordinary situation, when justice requires,

any requirement of the regulations in this part which

is not a requirement of the statutes may be

suspended or waived by the Director or the

Director’s designee, sua sponte, or on petition of

the interested party, subject to such other

requirements as may be imposed. Any petition under

this section must be accompanied by the petition

fee set forth in § 1.17(f).

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004,

effective Nov. 22, 2004]

§ 1.184 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

APPEAL TO THE PATENT TRIAL AND

APPEAL BOARD

§ 1.191 Appeal to Patent Trial and Appeal

Board.

Appeals to the Patent Trial and Appeal Board under

35 U.S.C. 134(a) and (b) are conducted according

to part 41 of this title.

R-150January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.182

[46 FR 29183, May 29, 1981; para. (a), 47 FR

41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (d),

49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR

48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (b)

and (d) amended, para. (e) added, 54 FR 29553, July 13,

1989, effective Aug. 20, 1989; para. (d) revised, 58 FR

54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. (a)

and (b) revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; para. (a) revised, 65 FR 76756, Dec. 7,

2000, effective Feb. 5, 2001; para. (e) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para. (a)

revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21,

2004; revised, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012]

§ 1.192 [Reserved]

[36 FR 5850, Mar. 30, 1971; para. (a), 47 FR

41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (a),

49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; 53 FR

23734, June 23, 1988, effective Sept. 12, 1988; para. (a),

(c), and (d) revised, 58 FR 54504, Oct. 22, 1993, effective

Jan. 3, 1994; paras. (a)-(c) revised, 60 FR 14488, Mar

17, 1995, effective Apr. 21, 1995; para. (a) revised, 62

FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; removed

and reserved, 69 FR 49959, Aug. 12, 2004, effective Sept.

13, 2004]

§ 1.193 [Reserved]

[24 FR 10332, Dec. 22, 1959; 34 FR 18858,

Nov.26, 1969; para. (c), 47 FR 21752, May 19, 1982,

added effective July 1, 1982; para. (b), 50 FR 9382, Mar.

7, 1985, effective May 8, 1985; 53 FR 23735, June 23,

1988, effective Sept. 12, 1988; para. (c) deleted, 57 FR

2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (b)

revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3,

1994; revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997; para. (b)(1) revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; para. (a)(1) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; removed and

reserved, 69 FR 49959, Aug. 12, 2004, effective Sept.

13, 2004]

§ 1.194 [Reserved]

[42 FR 5595, Jan. 28, 1977; paras. (b) & (c), 47

FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; para.

(a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;

para. (b) revised 53 FR 23735, June 23, 1988, effective

Sept. 12, 1988; para. (b) revised, 58 FR 54504, Oct. 22,

1993, effective Jan. 3, 1994; revised, 62 FR 53132, Oct.

10, 1997, effective Dec. 1, 1997; removed and reserved,

69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]

§ 1.195 [Reserved]

[34 FR 18858, Nov. 26, 1969; removed and

reserved, 69 FR 49959, Aug. 12, 2004, effective Sept.

13, 2004]

§ 1.196 [Reserved]

[24 FR 10332, Dec. 12, 1959; 49 FR 29183, May

29, 1981; 49 FR 48416, Dec. 12, 1984, effective Feb. 12,

1985; para. (b) revised, 53 FR 23735, June 23, 1988,

effective Sept. 12, 1988; paras. (a), (b) & (d) amended,

paras. (e) & (f) added, 54 FR 29552, July 13, 1989,

effective Aug. 20, 1989; para. (f) revised, 58 FR 54504,

Oct. 22, 1993, effective Jan. 3, 1994; paras. (b) & (d)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; removed and reserved, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004]

§ 1.197 Termination of proceedings.

(a) Proceedings on an application are considered

terminated by the dismissal of an appeal or the

failure to timely ﬁle an appeal to the court or a civil

action except:

(1) Where claims stand allowed in an

application; or

(2) Where the nature of the decision requires

further action by the examiner.

(b) The date of termination of proceedings

on an application is the date on which the appeal is

dismissed or the date on which the time for appeal

to the U.S. Court of Appeals for the Federal Circuit

or review by civil action (§ 90.3 of this chapter)

expires in the absence of further appeal or review.

If an appeal to the U.S. Court of Appeals for the

Federal Circuit or a civil action has been ﬁled,

proceedings on an application are considered

terminated when the appeal or civil action is

terminated. A civil action is terminated when the

time to appeal the judgment expires. An appeal to

the U.S. Court of Appeals for the Federal Circuit,

whether from a decision of the Board or a judgment

in a civil action, is terminated when the mandate is

issued by the Court.

[46 FR 29184, May 29, 1981; para. (a), 47 FR

41272, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 556,

Jan. 4, 1984, effective Apr. 1, 1984; paras. (a) and (b),

49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985;

paras. (b) and (c), 54 FR 29552, July 13, 1989, effective

Aug. 20, 1989; para. (b) revised, 58 FR 54504, Oct. 22,

January 2018R-151

§ 1.197CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1993, effective Jan. 3, 1994; paras. (a) & (b) revised, 62

FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

21, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; section heading revised and para. (a)

removed and reserved, 76 FR 72270, Nov. 22, 2011,

effective Jan. 23, 2012; revised, 78 FR 62368, Oct. 21,

2013, effective Dec. 18, 2013 and corrected 78 FR 75251,

Dec. 11, 2013, effective Dec. 18, 2013]

§ 1.198 Reopening after a ﬁnal decision of

the Patent Trial and Appeal Board.

When a decision by the Patent Trial and Appeal

Board on appeal has become ﬁnal for judicial

review, prosecution of the proceeding before the

primary examiner will not be reopened or

reconsidered by the primary examiner except under

the provisions of § 1.114 or § 41.50 of this title

without the written authority of the Director, and

then only for the consideration of matters not already

adjudicated, sufﬁcient cause being shown.

[49 FR 48416, Dec. 12, 1984, effective date Feb.

11, 1985; revised, 65 FR 14865, Mar. 20, 2000, effective

May 29, 2000 (adopted as ﬁnal, 65 FR 50092, Aug. 16,

2000); revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004,

effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012]

PUBLICATION OF APPLICATIONS

§ 1.211 Publication of applications.

[Editor Note: Para. (c) below is applicable only to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after September 16, 2012*]

(a) Each U.S. national application for patent

ﬁled in the Ofﬁce under 35 U.S.C. 111(a) and each

international application in compliance with 35

U.S.C. 371 will be published promptly after the

expiration of a period of eighteen months from the

earliest ﬁling date for which a beneﬁt is sought

under title 35, United States Code, unless:

(1) The application is recognized by the

Ofﬁce as no longer pending;

(2) The application is national security

classiﬁed (see § 5.2(c)), subject to a secrecy order

under 35 U.S.C. 181, or under national security

review;

(3) The application has issued as a patent in

sufﬁcient time to be removed from the publication

process; or

(4) The application was ﬁled with a

nonpublication request in compliance with §

1.213(a).

(b) Provisional applications under 35 U.S.C.

111(b) shall not be published, and design

applications under 35 U.S.C. chapter 16,

international design applications under 35 U.S.C.

chapter 38, and reissue applications under 35 U.S.C.

chapter 25 shall not be published under this section.

will not be published until it includes the basic ﬁling

fee (§ 1.16(a) or § 1.16(c) ) and any English

translation required by § 1.52(d). The Ofﬁce may

delay publishing any application until it includes

any application size fee required by the Ofﬁce under

§ 1.16(s) or § 1.492(j), a speciﬁcation having papers

in compliance with § 1.52 and an abstract (§

1.72(b)), drawings in compliance with § 1.84, a

sequence listing in compliance with §§ 1.821

through 1.825 (if applicable), and the inventor’s

oath or declaration or application data sheet

containing the information speciﬁed in § 1.63(b).

(d) The Ofﬁce may refuse to publish an

application, or to include a portion of an application

in the patent application publication (§ 1.215), if

publication of the application or portion thereof

would violate Federal or state law, or if the

application or portion thereof contains offensive or

disparaging material.

(e) The publication fee set forth in § 1.18(d)

must be paid in each application published under

this section before the patent will be granted. If an

application is subject to publication under this

section, the sum speciﬁed in the notice of allowance

under § 1.311 will also include the publication fee

which must be paid within three months from the

date of mailing of the notice of allowance to avoid

abandonment of the application. This three-month

period is not extendable. If the application is not

published under this section, the publication fee (if

paid) will be refunded.

[Added, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000; para. (c) revised, 70 FR 3880, Jan. 27,

2005, effective Dec. 8, 2004; para. (c) revised, 77 FR

48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (b)

R-152January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.198

revised, 80 FR 17918, Apr. 2, 2015, effective May 13,

2015]

[*The revisions to para. (c) effective Sept. 16, 2012

are applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.211 (pre-AIA) for para. (c) otherwise in effect.]

§ 1.211 (pre-AIA) Publication of

applications.

[Editor Note: Para. (c) below is not applicable to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after September 16, 2012*]

(a) Each U.S. national application for patent

ﬁled in the Ofﬁce under 35 U.S.C.111(a) and each

international application in compliance with 35

U.S.C. 371 will be published promptly after the

expiration of a period of eighteen months from the

earliest ﬁling date for which a beneﬁt is sought

under title 35, United States Code, unless:

(1) The application is recognized by the

Ofﬁce as no longer pending;

(2) The application is national security

classiﬁed (see § 5.2(c)), subject to a secrecy order

under 35 U.S.C. 181, or under national security

review;

(3) The application has issued as a patent in

sufﬁcient time to be removed from the publication

process; or

(4) The application was ﬁled with a

nonpublication request in compliance with §

1.213(a).

(b) Provisional applications under 35 U.S.C.

111(b) shall not be published, and design

applications under 35 U.S.C. chapter 16 and reissue

applications under 35 U.S.C. chapter 25 shall not

be published under this section.

will not be published until it includes the basic ﬁling

fee (§ 1.16(a) or 1.16(c)), any English translation

required by § 1.52(d), and an executed oath or

declaration under § 1.63. The Ofﬁce may delay

publishing any application until it includes any

application size fee required by the Ofﬁce under §

1.16(s) or § 1.492(j), a speciﬁcation having papers

in compliance with § 1.52 and an abstract (§

1.72(b)), drawings in compliance with § 1.84, and

a sequence listing in compliance with §§ 1.821

through 1.825 (if applicable), and until any petition

under § 1.47 is granted.

(d) The Ofﬁce may refuse to publish an

application, or to include a portion of an application

in the patent application publication (§ 1.215), if

publication of the application or portion thereof

would violate Federal or state law, or if the

application or portion thereof contains offensive or

disparaging material.

(e) The publication fee set forth in § 1.18(d)

must be paid in each application published under

this section before the patent will be granted. If an

application is subject to publication under this

section, the sum speciﬁed in the notice of allowance

under § 1.311 will also include the publication fee

which must be paid within three months from the

date of mailing of the notice of allowance to avoid

abandonment of the application. This three-month

period is not extendable. If the application is not

published under this section, the publication fee (if

paid) will be refunded.

[Added, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000; para. (c) revised, 70 FR 3880, Jan. 27,

2005, effective Dec. 8, 2004]

[*See § 1.211 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.213 Nonpublication request.

(a) If the invention disclosed in an application

has not been and will not be the subject of an

application ﬁled in another country, or under a

multilateral international agreement, that requires

publication of applications eighteen months after

ﬁling, the application will not be published under

35 U.S.C. 122(b) and § 1.211 provided:

(1) A request (nonpublication request) is

submitted with the application upon ﬁling;

(2) The request states in a conspicuous

manner that the application is not to be published

under 35 U.S.C. 122(b);

(3) The request contains a certiﬁcation that

the invention disclosed in the application has not

been and will not be the subject of an application

ﬁled in another country, or under a multilateral

international agreement, that requires publication

at eighteen months after ﬁling; and

January 2018R-153

§ 1.213CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(4) The request is signed in compliance with

§ 1.33(b).

(b) The applicant may rescind a nonpublication

request at any time. A request to rescind a

nonpublication request under paragraph (a) of this

section must:

(1) Identify the application to which it is

directed;

(2) State in a conspicuous manner that the

request that the application is not to be published

under 35 U.S.C. 122(b) is rescinded; and

(3) Be signed in compliance with § 1.33(b).

nonpublication request under paragraph (a) of this

section subsequently ﬁles an application directed to

the invention disclosed in the application in which

the nonpublication request was submitted in another

country, or under a multilateral international

agreement, that requires publication of applications

eighteen months after ﬁling, the applicant must

notify the Ofﬁce of such ﬁling within forty-ﬁve

days after the date of the ﬁling of such foreign or

international application. The failure to timely notify

the Ofﬁce of the ﬁling of such foreign or

international application shall result in abandonment

of the application in which the nonpublication

request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).

[Added, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000]

§ 1.215 Patent application publication.

[Editor Note: Paragraphs (a) - (c) below are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after September 16, 2012*]

(a) The publication of an application under 35

U.S.C. 122(b) shall include a patent application

publication. The date of publication shall be

indicated on the patent application publication. The

patent application publication will be based upon

the speciﬁcation and drawings deposited on the

ﬁling date of the application, as well as the

application data sheet and/or the inventor’s oath or

declaration. The patent application publication may

also be based upon amendments to the speciﬁcation

(other than the abstract or the claims) that are

reﬂected in a substitute speciﬁcation under §

1.125(b), amendments to the abstract under §

1.121(b), amendments to the claims that are reﬂected

in a complete claim listing under § 1.121(c), and

amendments to the drawings under § 1.121(d),

provided that such substitute speciﬁcation or

amendment is submitted in sufﬁcient time to be

entered into the Ofﬁce ﬁle wrapper of the

application before technical preparations for

publication of the application have begun. Technical

preparations for publication of an application

generally begin four months prior to the projected

date of publication. The patent application

publication of an application that has entered the

national stage under 35 U.S.C. 371 may also include

amendments made during the international stage.

See paragraph (c) of this section for publication of

an application based upon a copy of the application

submitted via the Ofﬁce electronic ﬁling system.

(b) The patent application publication will

include the name of the assignee, person to whom

the inventor is under an obligation to assign the

invention, or person who otherwise shows sufﬁcient

proprietary interest in the matter if that information

is provided in the application data sheet in an

application ﬁled under § 1.46. Assignee information

may be included on the patent application

publication in other applications if the assignee

information is provided in an application data sheet

submitted in sufﬁcient time to be entered into the

Ofﬁce ﬁle wrapper of the application before

technical preparations for publication of the

application have begun. Providing assignee

information in the application data sheet does not

substitute for compliance with any requirement of

part 3 of this chapter to have an assignment recorded

by the Ofﬁce.

publication will be based upon the copy of the

application (speciﬁcation, drawings, and the

application data sheet and/or the inventor’s oath or

declaration) as amended, provided that applicant

supplies such a copy in compliance with the Ofﬁce

electronic ﬁling system requirements within one

month of the mailing date of the ﬁrst Ofﬁce

communication that includes a conﬁrmation number

for the application, or fourteen months of the earliest

ﬁling date for which a beneﬁt is sought under title

35, United States Code, whichever is later.

(d) If the copy of the application submitted

pursuant to paragraph (c) of this section does not

comply with the Ofﬁce electronic ﬁling system

requirements, the Ofﬁce will publish the application

R-154January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.215

as provided in paragraph (a) of this section. If,

however, the Ofﬁce has not started the publication

process, the Ofﬁce may use an untimely ﬁled copy

of the application supplied by the applicant under

paragraph (c) of this section in creating the patent

application publication.

[Added, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000; paras. (a) and (c) revised, 69 FR 56481,

Sept. 21, 2004, effective Oct. 21, 2004; paras. (a)-(c)

revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16,

2012]

[*The revisions to paras. (a)-(c) effective Sept. 16,

2012 are applicable only to patent applications ﬁled under

35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See

§ 1.215 (pre-AIA) for the rule otherwise in effect.]

§ 1.215 (pre-AIA) Patent application

publication.

[Editor Paragraphs (a) - (c) below are not

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

(a) The publication of an application under 35

U.S.C. 122(b) shall include a patent application

publication. The date of publication shall be

indicated on the patent application publication. The

patent application publication will be based upon

the speciﬁcation and drawings deposited on the

ﬁling date of the application, as well as the executed

oath or declaration submitted to complete the

application. The patent application publication may

also be based upon amendments to the speciﬁcation

(other than the abstract or the claims) that are

reﬂected in a substitute speciﬁcation under §

1.125(b), amendments to the abstract under §

1.121(b), amendments to the claims that are reﬂected

in a complete claim listing under § 1.121(c), and

amendments to the drawings under § 1.121(d),

provided that such substitute speciﬁcation or

amendment is submitted in sufﬁcient time to be

entered into the Ofﬁce ﬁle wrapper of the

application before technical preparations for

publication of the application have begun. Technical

preparations for publication of an application

generally begin four months prior to the projected

date of publication. The patent application

publication of an application that has entered the

national stage under 35 U.S.C. 371 may also include

amendments made during the international stage.

See paragraph (c) of this section for publication of

an application based upon a copy of the application

submitted via the Ofﬁce electronic ﬁling system.

(b) If applicant wants the patent application

publication to include assignee information, the

applicant must include the assignee information on

the application transmittal sheet or the application

data sheet (§ 1.76). Assignee information may not

be included on the patent application publication

unless this information is provided on the application

transmittal sheet or application data sheet included

with the application on ﬁling. Providing this

information on the application transmittal sheet or

the application data sheet does not substitute for

compliance with any requirement of part 3 of this

chapter to have an assignment recorded by the

Ofﬁce.

publication will be based upon the copy of the

application (speciﬁcation, drawings, and oath or

declaration) as amended, provided that applicant

supplies such a copy in compliance with the Ofﬁce

electronic ﬁling system requirements within one

month of the mailing date of the ﬁrst Ofﬁce

communication that includes a conﬁrmation number

for the application, or fourteen months of the earliest

ﬁling date for which a beneﬁt is sought under title

35, United States Code, whichever is later.

(d) If the copy of the application submitted

pursuant to paragraph (c) of this section does not

comply with the Ofﬁce electronic ﬁling system

requirements, the Ofﬁce will publish the application

as provided in paragraph (a) of this section. If,

however, the Ofﬁce has not started the publication

process, the Ofﬁce may use an untimely ﬁled copy

of the application supplied by the applicant under

paragraph (c) of this section in creating the patent

application publication.

[Added, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000; paras. (a) and (c) revised, 69 FR 56481,

Sept. 21, 2004, effective Oct. 21, 2004]

[*See § 1.215 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.217 Publication of a redacted copy of an

application.

(a) If an applicant has ﬁled applications in one

or more foreign countries, directly or through a

multilateral international agreement, and such

January 2018R-155

§ 1.217CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

foreign-ﬁled applications or the description of the

invention in such foreign-ﬁled applications is less

extensive than the application or description of the

invention in the application ﬁled in the Ofﬁce, the

applicant may submit a redacted copy of the

application ﬁled in the Ofﬁce for publication,

eliminating any part or description of the invention

that is not also contained in any of the corresponding

applications ﬁled in a foreign country. The Ofﬁce

will publish the application as provided in § 1.215(a)

unless the applicant ﬁles a redacted copy of the

application in compliance with this section within

sixteen months after the earliest ﬁling date for which

a beneﬁt is sought under title 35, United States

Code.

(b) The redacted copy of the application must

be submitted in compliance with the Ofﬁce

electronic ﬁling system requirements. The title of

the invention in the redacted copy of the application

must correspond to the title of the application at the

time the redacted copy of the application is

submitted to the Ofﬁce. If the redacted copy of the

application does not comply with the Ofﬁce

electronic ﬁling system requirements, the Ofﬁce

will publish the application as provided in §

1.215(a).

in paper (§ 1.52(a)) to be ﬁled in the application:

(1) A certiﬁed copy of each foreign-ﬁled

application that corresponds to the application for

which a redacted copy is submitted;

(2) A translation of each such foreign-ﬁled

application that is in a language other than English,

and a statement that the translation is accurate;

(3) A marked-up copy of the application

showing the redactions in brackets; and

(4) A certiﬁcation that the redacted copy of

the application eliminates only the part or

description of the invention that is not contained in

any application ﬁled in a foreign country, directly

or through a multilateral international agreement,

that corresponds to the application ﬁled in the

Ofﬁce.

(d) The Ofﬁce will provide a copy of the

complete ﬁle wrapper and contents of an application

for which a redacted copy was submitted under this

section to any person upon written request pursuant

to § 1.14(c)(2), unless applicant complies with the

requirements of paragraphs (d)(1), (d)(2), and (d)(3)

of this section.

(1) Applicant must accompany the

submission required by paragraph (c) of this section

with the following:

(i) A copy of any Ofﬁce correspondence

previously received by applicant including any

desired redactions, and a second copy of all Ofﬁce

correspondence previously received by applicant

showing the redacted material in brackets; and

(ii) A copy of each submission

previously ﬁled by the applicant including any

desired redactions, and a second copy of each

submission previously ﬁled by the applicant

showing the redacted material in brackets.

(2) In addition to providing the submission

required by paragraphs (c) and (d)(1) of this section,

applicant must:

(i) Within one month of the date of

mailing of any correspondence from the Ofﬁce, ﬁle

a copy of such Ofﬁce correspondence including any

desired redactions, and a second copy of such Ofﬁce

correspondence showing the redacted material in

brackets; and

(ii) With each submission by the

applicant, include a copy of such submission

including any desired redactions, and a second copy

of such submission showing the redacted material

in brackets.

(3) Each submission under paragraph (d)(1)

or (d)(2) of this paragraph must also be accompanied

by the processing fee set forth in § 1.17(i) and a

certiﬁcation that the redactions are limited to the

elimination of material that is relevant only to the

part or description of the invention that was not

contained in the redacted copy of the application

submitted for publication.

(e) The provisions of § 1.8 do not apply to the

time periods set forth in this section.

[Added, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000]

§ 1.219 Early publication.

Applications that will be published under § 1.211

may be published earlier than as set forth in §

1.211(a) at the request of the applicant. Any request

R-156January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.219

for early publication must be accompanied by the

publication fee set forth in § 1.18(d). If the applicant

does not submit a copy of the application in

compliance with the Ofﬁce electronic ﬁling system

requirements pursuant to § 1.215(c), the Ofﬁce will

publish the application as provided in § 1.215(a).

No consideration will be given to requests for

publication on a certain date, and such requests will

be treated as a request for publication as soon as

possible.

[Added, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000]

§ 1.221 Voluntary publication or

republication of patent application

publication.

(a) Any request for publication of an application

ﬁled before, but pending on, November 29, 2000,

and any request for republication of an application

previously published under § 1.211, must include a

copy of the application in compliance with the

Ofﬁce electronic ﬁling system requirements and be

accompanied by the publication fee set forth in §

1.18(d) and the processing fee set forth in § 1.17(i).

If the request does not comply with the requirements

of this paragraph or the copy of the application does

not comply with the Ofﬁce electronic ﬁling system

requirements, the Ofﬁce will not publish the

application and will refund the publication fee.

(b) The Ofﬁce will grant a request for a

corrected or revised patent application publication

other than as provided in paragraph (a) of this

section only when the Ofﬁce makes a material

mistake which is apparent from Ofﬁce records. Any

request for a corrected or revised patent application

publication other than as provided in paragraph (a)

of this section must be ﬁled within two months from

the date of the patent application publication. This

period is not extendable.

[Added, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000]

MISCELLANEOUS PROVISIONS

§ 1.248 Service of papers; manner of service;

proof of service in cases other than

interferences and trials.

(a) Service of papers must be on the attorney or

agent of the party if there be such or on the party if

there is no attorney or agent, and may be made in

any of the following ways:

(1) By delivering a copy of the paper to the

person served;

(2) By leaving a copy at the usual place of

business of the person served with someone in his

employment;

(3) When the person served has no usual

place of business, by leaving a copy at the person’s

residence, with some person of suitable age and

discretion who resides there;

(4) Transmission by ﬁrst class mail. When

service is by mail the date of mailing will be

regarded as the date of service;

(5) Whenever it shall be satisfactorily shown

to the Director that none of the above modes of

obtaining or serving the paper is practicable, service

may be by notice published in the Ofﬁcial Gazette.

(b) Papers ﬁled in the Patent and Trademark

Ofﬁce which are required to be served shall contain

proof of service. Proof of service may appear on or

be afﬁxed to papers ﬁled. Proof of service shall

include the date and manner of service. In the case

of personal service, proof of service shall also

include the name of any person served, certiﬁed by

the person who made service. Proof of service may

be made by:

(1) An acknowledgement of service by or

on behalf of the person served or

(2) A statement signed by the attorney or

agent containing the information required by this

section.

service of papers in contested cases or trials before

the Patent Trial and Appeal Board.

[46 FR 29184, May 29, 1981; 49 FR 48416, Dec.

12, 1984, effective Feb. 11, 1985; para. (a)(5) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para.

January 2018R-157

§ 1.248CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

13, 2004; para. (c) revised, 69 FR 49959, Aug. 12, 2004,

effective Sept. 13, 2004; para. (c) revised, 69 FR 5 8260,

Sept. 30, 2004, effective Sept. 30, 2004; section heading

and para. (c) revised, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012]

§ 1.251 Unlocatable ﬁle.

(a) In the event that the Ofﬁce cannot locate the

ﬁle of an application, patent, or other patent-related

proceeding after a reasonable search, the Ofﬁce will

notify the applicant or patentee and set a time period

within which the applicant or patentee must comply

with the notice in accordance with one of paragraphs

(a)(1), (a)(2), or (a)(3) of this section.

(1) Applicant or patentee may comply with

a notice under this section by providing:

(i) A copy of the applicant’s or patentee’s

record (if any) of all of the correspondence between

the Ofﬁce and the applicant or patentee for such

application, patent, or other proceeding (except for

U.S. patent documents);

(ii) A list of such correspondence; and

(iii) A statement that the copy is a

complete and accurate copy of the applicant’s or

patentee’s record of all of the correspondence

between the Ofﬁce and the applicant or patentee for

such application, patent, or other proceeding (except

for U.S. patent documents), and whether applicant

or patentee is aware of any correspondence between

the Ofﬁce and the applicant or patentee for such

application, patent, or other proceeding that is not

among applicant’s or patentee’s records.

(2) Applicant or patentee may comply with

a notice under this section by:

(i) Producing the applicant’s or

patentee’s record (if any) of all of the

correspondence between the Ofﬁce and the applicant

or patentee for such application, patent, or other

proceeding for the Ofﬁce to copy (except for U.S.

patent documents); and

(ii) Providing a statement that the papers

produced by applicant or patentee are applicant’s

or patentee’s complete record of all of the

correspondence between the Ofﬁce and the applicant

or patentee for such application, patent, or other

proceeding (except for U.S. patent documents), and

whether applicant or patentee is aware of any

correspondence between the Ofﬁce and the applicant

or patentee for such application, patent, or other

proceeding that is not among applicant’s or

patentee’s records.

(3) If applicant or patentee does not possess

any record of the correspondence between the Ofﬁce

and the applicant or patentee for such application,

patent, or other proceeding, applicant or patentee

must comply with a notice under this section by

providing a statement that applicant or patentee does

not possess any record of the correspondence

between the Ofﬁce and the applicant or patentee for

such application, patent, or other proceeding.

(b) With regard to a pending application, failure

to comply with one of paragraphs (a)(1), (a)(2), or

(a)(3) of this section within the time period set in

the notice will result in abandonment of the

application.

[Added, 65 FR 69446, Nov. 17, 2000, effective

Nov. 17, 2000]

§ 1.265 [Removed]

[Added, 72 FR 46716, Aug. 21, 2007

(implementation enjoined and never became effective);

removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14,

2009 (to remove changes made by the ﬁnal rules in 72

FR 46716 from the CFR)]

PREISSUANCE SUBMISSIONS AND

PROTESTS BY THIRD PARTIES

§ 1.290 Submissions by third parties in

applications.

(a) A third party may submit, for consideration

and entry in the record of a patent application, any

patents, published patent applications, or other

printed publications of potential relevance to the

examination of the application if the submission is

made in accordance with 35 U.S.C. 122(e) and this

section. A third-party submission may not be entered

or considered by the Ofﬁce if any part of the

submission is not in compliance with 35 U.S.C.

122(e) and this section.

(b) Any third-party submission under this

section must be ﬁled prior to the earlier of:

(1) The date a notice of allowance under §

1.311 is given or mailed in the application; or

(2) The later of:

R-158January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.251

(i) Six months after the date on which

the application is ﬁrst published by the Ofﬁce under

35 U.S.C. 122(b) and § 1.211, or

(ii) The date the ﬁrst rejection under §

1.104 of any claim by the examiner is given or

mailed during the examination of the application.

section must be made in writing.

(d) Any third-party submission under this

section must include:

(1) A document list identifying the

documents, or portions of documents, being

submitted in accordance with paragraph (e) of this

section;

(2) A concise description of the asserted

relevance of each item identiﬁed in the document

list;

(3) A legible copy of each item identiﬁed in

the document list, other than U.S. patents and U.S.

patent application publications;

(4) An English language translation of any

non-English language item identiﬁed in the

document list; and

(5) A statement by the party making the

submission that:

(i) The party is not an individual who has

a duty to disclose information with respect to the

application under § 1.56; and

(ii) The submission complies with the

requirements of 35 U.S.C. 122(e) and this section.

(e) The document list required by paragraph

(d)(1) of this section must include a heading that

identiﬁes the list as a third-party submission under

§ 1.290, identify on each page of the list the

application number of the application in which the

submission is being ﬁled, list U.S. patents and U.S.

patent application publications in a separate section

from other items, and identify each:

(1) U.S. patent by patent number, ﬁrst named

inventor, and issue date;

(2) U.S. patent application publication by

patent application publication number, ﬁrst named

inventor, and publication date;

(3) Foreign patent or published foreign

patent application by the country or patent ofﬁce

that issued the patent or published the application;

the applicant, patentee, or ﬁrst named inventor; an

appropriate document number; and the publication

date indicated on the patent or published application;

and

(4) Non-patent publication by author (if any),

title, pages being submitted, publication date, and,

where available, publisher and place of publication.

If no publication date is known, the third party must

provide evidence of publication.

(f) Any third-party submission under this section

must be accompanied by the fee set forth in §

1.17(o) for every ten items or fraction thereof

identiﬁed in the document list.

(g) The fee otherwise required by paragraph (f)

of this section is not required for a submission listing

three or fewer total items that is accompanied by a

statement by the party making the submission that,

to the knowledge of the person signing the statement

after making reasonable inquiry, the submission is

the ﬁrst and only submission under 35 U.S.C. 122(e)

ﬁled in the application by the party or a party in

privity with the party.

(h) In the absence of a request by the Ofﬁce, an

applicant need not reply to a submission under this

section.

(i) The provisions of § 1.8 do not apply to the

time periods set forth in this section.

[Added, 77 FR 42150, July 17, 2012, effective

Sept. 16, 2012; para. (f) revised, 78 FR 62368, Oct. 21,

2013, effective Dec. 18, 2013]

§ 1.291 Protests by the public against

pending applications.

(a) A protest may be ﬁled by a member of the

public against a pending application, and it will be

matched with the application ﬁle if it adequately

identiﬁes the patent application. A protest submitted

within the time frame of paragraph (b) of this

section, which is not matched, or not matched in a

timely manner to permit review by the examiner

during prosecution, due to inadequate identiﬁcation,

may not be entered and may be returned to the

protestor where practical, or, if return is not

practical, discarded.

(b) The protest will be entered into the record

of the application if, in addition to complying with

paragraph (c) of this section, the protest has been

served upon the applicant in accordance with §

January 2018R-159

§ 1.291CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1.248, or ﬁled with the Ofﬁce in duplicate in the

event service is not possible; and, except for

paragraph (b)(1) of this section, the protest was ﬁled

prior to the date the application was published under

§ 1.211, or the date a notice of allowance under §

1.311 was given or mailed, whichever occurs ﬁrst:

(1) If a protest is accompanied by the written

consent of the applicant, the protest will be

considered if the protest is ﬁled prior to the date a

notice of allowance under § 1.311 is given or mailed

in the application.

(2) A statement must accompany a protest

that it is the ﬁrst protest submitted in the application

by the real party in interest who is submitting the

protest; or the protest must comply with paragraph

(c)(5) of this section. This section does not apply to

the ﬁrst protest ﬁled in an application.

(a) and (b) of this section, a protest must include:

(1) An information list of the documents,

portions of documents, or other information being

submitted, where each:

(i) U.S. patent is identiﬁed by patent

number, ﬁrst named inventor, and issue date;

(ii) U.S. patent application publication

is identiﬁed by patent application publication

number, ﬁrst named inventor, and publication date;

(iii) Foreign patent or published foreign

patent application is identiﬁed by the country or

patent ofﬁce that issued the patent or published the

application; an appropriate document number; the

applicant, patentee, or ﬁrst named inventor; and the

publication date indicated on the patent or published

application;

(iv) Non-patent publication is identiﬁed

by author (if any), title, pages being submitted,

publication date, and, where available, publisher

and place of publication; and

(v) Item of other information is identiﬁed

by date, if known.

(2) A concise explanation of the relevance

of each item identiﬁed in the information list

pursuant to paragraph (c)(1) of this section;

(3) A legible copy of each item identiﬁed in

the information list, other than U.S. patents and U.S.

patent application publications;

(4) An English language translation of any

non-English language item identiﬁed in the

information list; and

(5) If it is a second or subsequent protest by

the same real party in interest, an explanation as to

why the issue(s) raised in the second or subsequent

protest are signiﬁcantly different than those raised

earlier and why the signiﬁcantly different issue(s)

were not presented earlier, and a processing fee

under § 1.17(i) must be submitted.

(d) A member of the public ﬁling a protest in

an application under this section will not receive

any communication from the Ofﬁce relating to the

protest, other than the return of a self-addressed

postcard which the member of the public may

include with the protest in order to receive an

acknowledgment by the Ofﬁce that the protest has

been received. The limited involvement of the

member of the public ﬁling a protest pursuant to

this section ends with the ﬁling of the protest, and

no further submission on behalf of the protestor will

be considered, unless the submission is made

pursuant to paragraph (c)(5) of this section.

(e) Where a protest raising inequitable conduct

issues satisﬁes the provisions of this section for

entry, it will be entered into the application ﬁle,

generally without comment on the inequitable

conduct issues raised in it.

(f) In the absence of a request by the Ofﬁce, an

applicant need not reply to a protest.

(g) Protests that fail to comply with paragraphs

(b) or (c) of this section may not be entered, and if

not entered, will be returned to the protestor, or

discarded, at the option of the Ofﬁce.

[47 FR 21752, May 19, 1982, effective July 1,

1982; paras. (a) and (c), 57 FR 2021, Jan. 17, 1992,

effective Mar. 16, 1992; paras. (a) and (b) revised, 61 FR

42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (c)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; para. (a)(1) revised, 65 FR 57024, Sept. 20, 2000,

effective Nov. 29, 2000; revised, 69 FR 56481, Sept. 21,

2004, effective Nov. 22, 2004; para. (b) introductory text

and paras. (b)(1), (c)(1)-(4), and (f) revised, 77 FR 42150,

July 17, 2012, effective Sept. 16, 2012]

§ 1.292 [Reserved]

[Removed and reserved, 77 FR 42150, July 17,

2012, effective Sept. 16, 2012]

R-160January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.292

§ 1.293 [Reserved]

[Removed and reserved, 78 FR 11024, Feb. 14,

2013, effective Mar. 16, 2013. See § 1.293

(pre-2013-03-16) for the rule applicable to any request

for a statutory invention registration ﬁled prior to March

16, 2013.]

§ 1.293 (pre-2013-03-16) Statutory invention

registration.

[Editor Note: Applies to any request for a statutory

invention registration ﬁled prior to March 16, 2013]

(a) An applicant for an original patent may

request, at any time during the pendency of

applicant’s pending complete application, that the

speciﬁcation and drawings be published as a

statutory invention registration. Any such request

must be signed by (1) the applicant and any assignee

of record or (2) an attorney or agent of record in the

application.

(b) Any request for publication of a statutory

invention registration must include the following

parts:

(1) A waiver of the applicant’s right to

receive a patent on the invention claimed effective

upon the date of publication of the statutory

invention registration;

(2) The required fee for ﬁling a request for

publication of a statutory invention registration as

provided for in § 1.17(n) or (o);

(3) A statement that, in the opinion of the

requester, the application to which the request is

directed meets the requirements of 35 U.S.C. 112;

and

(4) A statement that, in the opinion of the

requester, the application to which the request is

directed complies with the formal requirements of

this part for printing as a patent.

invention registration will be effective, upon

publication of the statutory invention registration,

to waive the inventor’s right to receive a patent on

the invention claimed in the statutory invention

registration, in any application for an original patent

which is pending on, or ﬁled after, the date of

publication of the statutory invention registration.

A waiver ﬁled with a request for a statutory

invention registration will not affect the rights of

any other inventor even if the subject matter of the

statutory invention registration and an application

of another inventor are commonly owned. A waiver

ﬁled with a request for a statutory invention

registration will not affect any rights in a patent to

the inventor which issued prior to the date of

publication of the statutory invention registration

unless a reissue application is ﬁled seeking to

enlarge the scope of the claims of the patent. See

also § 1.104(c)(5).

[50 FR 9382, Mar. 7, 1985, effective date May 8,

1985; para. (c) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; removed and reserved, 78 FR

11024, Feb. 14, 2013, effective Mar. 16, 2013]

§ 1.294 [Reserved]

[Removed and reserved, 78 FR 11024, Feb. 14,

2013, effective Mar. 16, 2013. See § 1.294

(pre-2013-03-16) for the rule applicable to any request

for a statutory invention registration ﬁled prior to March

16, 2013.]

§ 1.294 (pre-2013-03-16) Examination of

request for publication of a statutory

invention registration and patent application

to which the request is directed.

[Editor Note: Applies to any request for a statutory

invention registration ﬁled prior to March 16, 2013]

(a) Any request for a statutory invention

registration will be examined to determine if the

requirements of § 1.293 have been met. The

application to which the request is directed will be

examined to determine (1) if the subject matter of

the application is appropriate for publication, (2) if

the requirements for publication are met, and (3) if

the requirements of 35 U.S.C. 112 and § 1.293 of

this part are met.

(b) Applicant will be notiﬁed of the results of

the examination set forth in paragraph (a) of this

section. If the requirements of § 1.293 and this

section are not met by the request ﬁled, the

notiﬁcation to applicant will set a period of time

within which to comply with the requirements in

order to avoid abandonment of the application. If

the application does not meet the requirements of

35 U.S.C. 112, the notiﬁcation to applicant will

include a rejection under the appropriate provisions

of 35 U.S.C. 112. The periods for reply established

January 2018R-161

§ 1.294

(pre-2013-03-16)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

pursuant to this section are subject to the extension

of time provisions of § 1.136. After reply by the

applicant, the application will again be considered

for publication of a statutory invention registration.

If the requirements of § 1.293 and this section are

not timely met, the refusal to publish will be made

ﬁnal. If the requirements of 35 U.S.C. 112 are not

met, the rejection pursuant to 35 U.S.C. 112 will be

made ﬁnal.

results in approval of the request for a statutory

invention registration the applicant will be notiﬁed

of the intent to publish a statutory invention

registration.

[50 FR 9382, Mar. 7, 1985, effective date May 8,

1985; para. (b) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; removed and reserved, 78 FR

11024, Feb. 14, 2013, effective Mar. 16, 2013]

§ 1.295 [Reserved]

[Removed and reserved, 78 FR 11024, Feb. 14,

2013, effective Mar. 16, 2013. See § 1.295

(pre-2013-03-16) for the rule applicable to any request

for a statutory invention registration ﬁled prior to March

16, 2013.]

§ 1.295 (pre-2013-03-16) Review of decision

ﬁnally refusing to publish a statutory

invention registration.

[Editor Note: Applies to any request for a statutory

invention registration ﬁled prior to March 16, 2013]

(a) Any requester who is dissatisﬁed with the

ﬁnal refusal to publish a statutory invention

registration for reasons other than compliance with

35 U.S.C. 112 may obtain review of the refusal to

publish the statutory invention registration by ﬁling

a petition to the Director accompanied by the fee

set forth in § 1.17(g) within one month or such other

time as is set in the decision refusing publication.

Any such petition should comply with the

requirements of § 1.181(b). The petition may include

a request that the petition fee be refunded if the ﬁnal

refusal to publish a statutory invention registration

for reasons other than compliance with 35 U.S.C.

112 is determined to result from an error by the

Patent and Trademark Ofﬁce.

(b) Any requester who is dissatisﬁed with a

decision ﬁnally rejecting claims pursuant to 35

U.S.C. 112 may obtain review of the decision by

ﬁling an appeal to the Board of Patent Appeals and

Interferences pursuant to § 41.31 of this title. If the

decision rejecting claims pursuant to 35 U.S.C. 112

is reversed, the request for a statutory invention

registration will be approved and the registration

published if all of the other provisions of § 1.293

and this section are met.

[50 FR 9382, Mar. 7, 1985, effective May 8, 1985;

para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; para. (b) revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; para. (a) revised, 69 FR

56481, Sept. 21, 2004, effective Nov. 22, 2004; removed

and reserved, 78 FR 11024, Feb. 14, 2013, effective Mar.

16, 2013]

§ 1.296 [Reserved]

[Removed and reserved, 78 FR 11024, Feb. 14,

2013, effective Mar. 16, 2013. See § 1.296

(pre-2013-03-16) for the rule applicable to any request

for a statutory invention registration ﬁled prior to March

16, 2013.]

§ 1.296 (pre-2013-03-16) Withdrawal of

request for publication of statutory invention

registration.

[Editor Note: Applies to any request for a statutory

invention registration ﬁled prior to March 16, 2013]

A request for a statutory invention registration,

which has been ﬁled, may be withdrawn prior to the

date of the notice of the intent to publish a statutory

invention registration issued pursuant to § 1.294(c)

by ﬁling a request to withdraw the request for

publication of a statutory invention registration. The

request to withdraw may also include a request for

a refund of any amount paid in excess of the

application ﬁling fee and a handling fee of $130.00

which will be retained. Any request to withdraw the

request for publication of a statutory invention

registration ﬁled on or after the date of the notice

of intent to publish issued pursuant to § 1.294(c)

must be in the form of a petition accompanied by

the fee set forth in § 1.17(g).

[50 FR 9382, Mar. 7, 1985, effective date May 8,

1985; revised, 54 FR 6893, Feb. 15, 1989, effective Apr.

17, 1989; 56 FR 65142, Dec. 13, 1991, effective Dec.

16, 1991; revised, 69 FR 56481, Sept. 21, 2004, effective

Nov. 22, 2004; removed and reserved, 78 FR 11024, Feb.

14, 2013, effective Mar. 16, 2013]

R-162January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.295

§ 1.297 [Reserved]

[Removed and reserved, 78 FR 11024, Feb. 14,

2013, effective Mar. 16, 2013. See § 1.297

(pre-2013-03-16) for the rule applicable to any request

for a statutory invention registration ﬁled prior to March

16, 2013.]

§ 1.297 (pre-2013-03-16) Publication of

statutory invention registration.

[Editor Note: Applies to any request for a statutory

invention registration ﬁled prior to March 16, 2013]

(a) If the request for a statutory invention

registration is approved the statutory invention

registration will be published. The statutory

invention registration will be mailed to the requester

at the correspondence address as provided for in §

1.33(a). A notice of the publication of each statutory

invention registration will be published in the

Ofﬁcial Gazette.

(b) Each statutory invention registration

published will include a statement relating to the

attributes of a statutory invention registration. The

statement will read as follows:

A statutory invention registration is not a

patent. It has the defensive attributes of a patent

but does not have the enforceable attributes of

a patent. No article or advertisement or the like

may use the term patent, or any term suggestive

of a patent, when referring to a statutory

invention registration. For more speciﬁc

information on the rights associated with a

statutory invention registration see 35 U.S.C.

157.

[50 FR 9382, Mar. 7, 1985, effective May 8, 1985;

50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985;

removed and reserved, 78 FR 11024, Feb. 14, 2013,

effective Mar. 16, 2013]

REVIEW OF PATENT AND TRADEMARK

OFFICE DECISIONS BY COURT

§ 1.301 [Reserved]

[Removed and reserved, 77 FR 48612, Aug. 14,

2012, effective Sept. 16, 2012]

§ 1.302 [Reserved]

[Removed and reserved, 77 FR 48612, Aug. 14,

2012, effective Sept. 16, 2012]

§ 1.303 [Reserved]

[Removed and reserved, 77 FR 48612, Aug. 14,

2012, effective Sept. 16, 2012]

§ 1.304 [Reserved]

[Removed and reserved, 77 FR 48612, Aug. 14,

2012, effective Sept. 16, 2012]

ALLOWANCE AND ISSUE OF PATENT

§ 1.311 Notice of Allowance.

(a) If, on examination, it appears that the

applicant is entitled to a patent under the law, a

notice of allowance will be sent to the applicant at

the correspondence address indicated in § 1.33. The

notice of allowance shall specify a sum constituting

the issue fee and any required publication fee (§

1.211(e)), which issue fee and any required

publication fee must both be paid within three

months from the date of mailing of the notice of

allowance to avoid abandonment of the application.

This three-month period is not extendable.

(b) An authorization to charge the issue fee or

other post-allowance fees set forth in § 1.18 to a

deposit account may be ﬁled in an individual

application only after mailing of the notice of

allowance. The submission of either of the following

after the mailing of a notice of allowance will

operate as a request to charge the correct issue fee

or any publication fee due to any deposit account

identiﬁed in a previously ﬁled authorization to

charge such fees:

(1) An incorrect issue fee or publication fee;

(2) A fee transmittal form (or letter) for

payment of issue fee or publication fee.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; para. (b) revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; revised, 65 FR 57024, Sept. 20,

2000, effective Nov. 29, 2000; para. (a) revised, 66 FR

67087, Dec. 28, 2001, effective Dec. 28, 2001; para. (b)

revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21,

January 2018R-163

§ 1.311CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

2004; para. (a) revised, 78 FR 62368, Oct. 21, 2013,

effective Dec. 18, 2013]

§ 1.312 Amendments after allowance.

No amendment may be made as a matter of right in

an application after the mailing of the notice of

allowance. Any amendment ﬁled pursuant to this

section must be ﬁled before or with the payment of

the issue fee, and may be entered on the

recommendation of the primary examiner, approved

by the Director, without withdrawing the application

from issue.

[Para. (b) revised, 58 FR 54504, Oct. 22, 1993,

effective Jan. 3, 1994; para. (b) revised, 60 FR 20195,

Apr. 25, 1995, effective June 8, 1995; para. (b) revised,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997;

revised, 65 FR 14865, Mar. 20, 2000, effective May 29,

2000 (adopted as ﬁnal, 65 FR 50092, Aug. 16, 2000);

revised, 68 FR 14332, Mar. 25, 2003, effective May 1,

2003]

§ 1.313 Withdrawal from issue.

(a) Applications may be withdrawn from issue

for further action at the initiative of the Ofﬁce or

upon petition by the applicant. To request that the

Ofﬁce withdraw an application from issue, applicant

must ﬁle a petition under this section including the

fee set forth in § 1.17(h) and a showing of good and

sufﬁcient reasons why withdrawal of the application

from issue is necessary. A petition under this section

is not required if a request for continued examination

under § 1.114 is ﬁled prior to payment of the issue

fee. If the Ofﬁce withdraws the application from

issue, the Ofﬁce will issue a new notice of allowance

if the Ofﬁce again allows the application.

(b) Once the issue fee has been paid, the Ofﬁce

will not withdraw the application from issue at its

own initiative for any reason except:

(1) A mistake on the part of the Ofﬁce;

(2) A violation of § 1.56 or illegality in the

application;

(3) Unpatentability of one or more claims;

(4) For an interference or derivation

proceeding.

application will not be withdrawn from issue upon

petition by the applicant for any reason except:

(1) Unpatentability of one of more claims,

which petition must be accompanied by an

unequivocal statement that one or more claims are

unpatentable, an amendment to such claim or claims,

and an explanation as to how the amendment causes

such claim or claims to be patentable;

(2) Consideration of a request for continued

examination in compliance with § 1.114; or

(3) Express abandonment of the application.

Such express abandonment may be in favor of a

continuing application.

(d) A petition under this section will not be

effective to withdraw the application from issue

unless it is actually received and granted by the

appropriate ofﬁcials before the date of issue.

Withdrawal of an application from issue after

payment of the issue fee may not be effective to

avoid publication of application information.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; para. (a), 54 FR 6893, Feb. 15, 1989, 54 FR 9432,

Mar. 7, 1989, effective Apr. 17, 1989; para. (b), 57 FR

2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (a)

revised, 60 FR 20195, Apr. 25, 1995, effective June 8,

1995; revised, 65 FR 14865, Mar. 20, 2000, effective

May 29, 2000 (paras. (b), (c)(1), (c)(3) and (d) adopted

as ﬁnal, 65 FR 50092, Aug. 16, 2000); paras. (a) and

(c)(2) revised, 65 FR 50092, Aug. 16, 2000, effective

Aug. 16, 2000; para. (b)(4) revised, 77 FR 46615, Aug.

6, 2012, effective Sept. 16, 2012]

§ 1.314 Issuance of patent.

If applicant timely pays the issue fee, the Ofﬁce will

issue the patent in regular course unless the

application is withdrawn from issue (§ 1.313) or the

Ofﬁce defers issuance of the patent. To request that

the Ofﬁce defer issuance of a patent, applicant must

ﬁle a petition under this section including the fee

set forth in § 1.17(h) and a showing of good and

sufﬁcient reasons why it is necessary to defer

issuance of the patent.

[47 FR 41272, Sept. 17, 1982, effective date Oct.

1, 1982; revised, 54 FR 6893, Feb. 15, 1989, effective

Apr. 17, 1989; revised, 60 FR 20195, Apr. 25, 1995,

effective June 8, 1995; revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000]

R-164January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.312

§ 1.315 Delivery of patent.

The patent will be delivered or mailed upon issuance

to the correspondence address of record. See §

1.33(a).

[Revised, 61 FR 42790, Aug. 19, 1996, effective

Sept. 23, 1996]

§ 1.316 Application abandoned for failure

to pay issue fee.

If the issue fee is not paid within three months from

the date of the notice of allowance, the application

will be regarded as abandoned. Such an abandoned

application will not be considered as pending before

the Patent and Trademark Ofﬁce.

[47 FR 41272, Sept. 17, 1982, effective date Oct.

1, 1982; paras. (b)-(d) amended, paras. (e) and (f) added,

58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993;

para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997]

§ 1.317 [Reserved]

[47 FR 41272, Sept. 17, 1982, effective date Oct.

1, 1982; paras. (a)-(d) amended, paras. (e) & (f) added,

58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993;

para. (d) amended, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; removed and reserved, 78 FR

62368, Oct. 21, 2013, effective Dec. 18, 2013]

§ 1.318 [Reserved]

[43 FR 20465, May 11, 1978; removed and

reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997]

DISCLAIMER

§ 1.321 Statutory disclaimers, including

terminal disclaimers.

[Editor Note: Para. (b) below is applicable only to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after September 16, 2012*]

(a) A patentee owning the whole or any

sectional interest in a patent may disclaim any

complete claim or claims in a patent. In like manner

any patentee may disclaim or dedicate to the public

the entire term, or any terminal part of the term, of

the patent granted. Such disclaimer is binding upon

the grantee and its successors or assigns. A notice

of the disclaimer is published in the Ofﬁcial Gazette

and attached to the printed copies of the

speciﬁcation. The disclaimer, to be recorded in the

Patent and Trademark Ofﬁce, must:

(1) Be signed by the patentee, or an attorney

or agent of record;

(2) Identify the patent and complete claim

or claims, or term being disclaimed. A disclaimer

which is not a disclaimer of a complete claim or

claims, or term will be refused recordation;

(3) State the present extent of patentee’s

ownership interest in the patent; and

(4) Be accompanied by the fee set forth in

§ 1.20(d).

(b) An applicant may disclaim or dedicate to

the public the entire term, or any terminal part of

the term, of a patent to be granted. Such terminal

disclaimer is binding upon the grantee and its

successors or assigns. The terminal disclaimer, to

be recorded in the Patent and Trademark Ofﬁce,

must:

(1) Be signed by the applicant or an attorney

or agent of record;

(2) Specify the portion of the term of the

patent being disclaimed;

(3) State the present extent of applicant’s

ownership interest in the patent to be granted; and

(4) Be accompanied by the fee set forth in

§ 1.20(d).

judicially created double patenting in a patent

application or in a reexamination proceeding except

as provided for in paragraph (d) of this section,

must:

(1) Comply with the provisions of

paragraphs (b)(2) through (b)(4) of this section;

(2) Be signed in accordance with paragraph

(b)(1) of this section if ﬁled in a patent application

or in accordance with paragraph (a)(1) of this section

if ﬁled in a reexamination proceeding; and

January 2018R-165

§ 1.321CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(3) Include a provision that any patent

granted on that application or any patent subject to

the reexamination proceeding shall be enforceable

only for and during such period that said patent is

commonly owned with the application or patent

which formed the basis for the judicially created

double patenting.

(d) A terminal disclaimer, when ﬁled in a patent

application or in a reexamination proceeding to

obviate double patenting based upon a patent or

application that is not commonly owned but was

disqualiﬁed as prior art as set forth in either §

1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities

undertaken within the scope of a joint research

agreement, must:

(1) Comply with the provisions of

paragraphs (b)(2) through (b)(4) of this section;

(2) Be signed in accordance with paragraph

(b)(1) of this section if ﬁled in a patent application

or be signed in accordance with paragraph (a)(1) of

this section if ﬁled in a reexamination proceeding;

and

(3) Include a provision waiving the right to

separately enforce any patent granted on that

application or any patent subject to the

reexamination proceeding and the patent or any

patent granted on the application which formed the

basis for the double patenting, and that any patent

granted on that application or any patent subject to

the reexamination proceeding shall be enforceable

only for and during such period that said patent and

the patent, or any patent granted on the application,

which formed the basis for the double patenting are

not separately enforced.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; revised, 58 FR 54504, Oct. 22, 1993, effective Jan.

3, 1994; para. (c) revised, 61 FR 42790, Aug. 19, 1996,

effective Sept. 23, 1996; para (d) added, 70 FR 1818,

Jan. 11, 2005, effective Dec. 10, 2004; paras. (c) and (d)

revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14,

2005; para. (b) revised, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012; ; para.(d) introductory text

revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16,

2013]

[*The revisions to para. (b) effective Sept. 16, 2012

were applicable only to patent applications ﬁled under

35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See

§ 1.321 (pre-AIA) for the rule otherwise in effect.]

§ 1.321 (pre-AIA) Statutory disclaimers,

including terminal disclaimers.

[Editor Note: Para. (b) below is not applicable to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after Sept. 16, 2012*]

(a) A patentee owning the whole or any

sectional interest in a patent may disclaim any

complete claim or claims in a patent. In like manner

any patentee may disclaim or dedicate to the public

the entire term, or any terminal part of the term, of

the patent granted. Such disclaimer is binding upon

the grantee and its successors or assigns. A notice

of the disclaimer is published in the Ofﬁcial Gazette

and attached to the printed copies of the

speciﬁcation. The disclaimer, to be recorded in the

Patent and Trademark Ofﬁce, must:

(1) Be signed by the patentee, or an attorney

or agent of record;

(2) Identify the patent and complete claim

or claims, or term being disclaimed. A disclaimer

which is not a disclaimer of a complete claim or

claims, or term will be refused recordation;

(3) State the present extent of patentee’s

ownership interest in the patent; and

(4) Be accompanied by the fee set forth in

§ 1.20(d).

(b) An applicant or assignee may disclaim or

dedicate to the public the entire term, or any terminal

part of the term, of a patent to be granted. Such

terminal disclaimer is binding upon the grantee and

its successors or assigns. The terminal disclaimer,

to be recorded in the Patent and Trademark Ofﬁce,

must:

(1) Be signed:

(i) By the applicant, or

(ii) If there is an assignee of record of an

undivided part interest, by the applicant and such

assignee, or

(iii) If there is an assignee of record of

the entire interest, by such assignee, or

(iv) By an attorney or agent of record;

(2) Specify the portion of the term of the

patent being disclaimed;

R-166January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.321 (pre-AIA)

(3) State the present extent of applicant’s or

assignee’s ownership interest in the patent to be

granted; and

(4) Be accompanied by the fee set forth in

§ 1.20(d).

judicially created double patenting in a patent

application or in a reexamination proceeding except

as provided for in paragraph (d) of this section,

must:

(1) Comply with the provisions of

paragraphs (b)(2) through (b)(4) of this section;

(2) Be signed in accordance with paragraph

(b)(1) of this section if ﬁled in a patent application

or in accordance with paragraph (a)(1) of this section

if ﬁled in a reexamination proceeding; and

(3) Include a provision that any patent

granted on that application or any patent subject to

the reexamination proceeding shall be enforceable

only for and during such period that said patent is

commonly owned with the application or patent

which formed the basis for the judicially created

double patenting.

(d) A terminal disclaimer, when ﬁled in a patent

application or in a reexamination proceeding to

obviate double patenting based upon a patent or

application that is not commonly owned but was

disqualiﬁed as prior art as set forth in either §

1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities

undertaken within the scope of a joint research

agreement, must:

(1) Comply with the provisions of

paragraphs (b)(2) through (b)(4) of this section;

(2) Be signed in accordance with paragraph

(b)(1) of this section if ﬁled in a patent application

or be signed in accordance with paragraph (a)(1) of

this section if ﬁled in a reexamination proceeding;

(3) Include a provision waiving the right to

separately enforce any patent granted on that

application or any patent subject to the

reexamination proceeding and the patent or any

patent granted on the application which formed the

basis for the double patenting, and that any patent

granted on that application or any patent subject to

the reexamination proceeding shall be enforceable

only for and during such period that said patent and

the patent, or any patent granted on the application,

which formed the basis for the double patenting are

not separately enforced.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; revised, 58 FR 54504, Oct. 22, 1993, effective Jan.

3, 1994; para. (c) revised, 61 FR 42790, Aug. 19, 1996,

effective Sept. 23, 1996; para (d) added, 70 FR 1818,

Jan. 11, 2005, effective Dec. 10, 2004; paras. (c) and (d)

revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14,

2005; para.(d) introductory text revised, 78 FR 11024,

Feb. 14, 2013, effective Mar. 16, 2013]

[*See § 1.321 for more information and for para.

(b) applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

CORRECTION OF ERRORS IN PATENT

§ 1.322 Certiﬁcate of correction of Ofﬁce

mistake.

(a)(1) The Director may issue a certiﬁcate

of correction pursuant to 35 U.S.C. 254 to correct

a mistake in a patent, incurred through the fault of

the Ofﬁce, which mistake is clearly disclosed in the

records of the Ofﬁce:

(i) At the request of the patentee or the

patentee’s assignee;

(ii) Acting sua sponte for mistakes that

the Ofﬁce discovers; or

(iii) Acting on information about a

mistake supplied by a third party.

(2)(i) There is no obligation on the Ofﬁce

to act on or respond to a submission of information

or request to issue a certiﬁcate of correction by a

third party under paragraph (a)(1)(iii) of this section.

(ii) Papers submitted by a third party

under this section will not be made of record in the

ﬁle that they relate to nor be retained by the Ofﬁce.

(3) If the request relates to a patent involved

in an interference or trial before the Patent Trial and

Appeal Board, the request must comply with the

requirements of this section and be accompanied by

a motion under § 41.121(a)(2), § 41.121(a)(3), or §

42.20 of this title.

(4) The Ofﬁce will not issue a certiﬁcate of

correction under this section without ﬁrst notifying

the patentee (including any assignee of record) at

the correspondence address of record as speciﬁed

January 2018R-167

§ 1.322CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

in § 1.33(a) and affording the patentee or an assignee

an opportunity to be heard.

(b) If the nature of the mistake on the part of

the Ofﬁce is such that a certiﬁcate of correction is

deemed inappropriate in form, the Director may

issue a corrected patent in lieu thereof as a more

appropriate form for certiﬁcate of correction,

without expense to the patentee.

[24 FR 10332, Dec. 22, 1959; 34 FR 5550, Mar.

22, 1969; para. (a), 49 FR 48416, Dec. 12, 1984, effective

Feb. 11, 1985; para. (a) revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; paras. (a)(1) & (b) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para.

(a)(3) revised, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (a)(3) revised, 77 FR 46615, Aug.

6, 2012, effective Sept. 16, 2012]

§ 1.323 Certiﬁcate of correction of

applicant’s mistake.

The Ofﬁce may issue a certiﬁcate of correction

under the conditions speciﬁed in 35 U.S.C. 255 at

the request of the patentee or the patentee’s assignee,

upon payment of the fee set forth in § 1.20(a). If the

request relates to a patent involved in an interference

or trial before the Patent Trial and Appeal Board,

the request must comply with the requirements of

this section and be accompanied by a motion under

§ 41.121(a)(2), § 41.121(a)(3) or § 42.20 of this

title.

[34 FR 5550, Mar. 22, 1969; 49 FR 48416, Dec.

12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR

49959, Aug. 12, 2004, effective Sept. 13, 2004; revised,

77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

§ 1.324 Correction of inventorship in patent,

pursuant to 35 U.S.C. 256.

(a) Whenever through error a person is named

in an issued patent as the inventor, or an inventor is

not named in an issued patent, the Director, pursuant

to 35 U.S.C. 256, may, on application of all the

parties and assignees, or on order of a court before

which such matter is called in question, issue a

certiﬁcate naming only the actual inventor or

inventors.

(b) Any request to correct inventorship of a

patent pursuant to paragraph (a) of this section must

be accompanied by:

(1) A statement from each person who is

being added as an inventor and each person who is

currently named as an inventor either agreeing to

the change of inventorship or stating that he or she

has no disagreement in regard to the requested

change;

(2) A statement from all assignees of the

parties submitting a statement under paragraph

(b)(1) of this section agreeing to the change of

inventorship in the patent, which statement must

comply with the requirements of § 3.73(c) of this

chapter; and

(3) The fee set forth in § 1.20(b).

application, see § 1.48.

(d) In an interference under part 41, subpart

D, of this title, a request for correction of

inventorship in a patent must be in the form of a

motion under § 41.121(a)(2) of this title. In a

contested case under part 42, subpart D, of this title,

a request for correction of inventorship in a patent

must be in the form of a motion under § 42.22 of

this title. The motion under § 41.121(a)(2) or § 42.22

of this title must comply with the requirements of

this section.

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983;

49 FR 48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985,

effective Feb. 11, 1985; revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; heading and para. (b)(1)

revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8,

2000; para. (c) added, 65 FR 54604, Sept. 8, 2000,

effective Sept. 8, 2000; para. (a) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; paras. (a) and (c)

revised and para. (d) added, 69 FR 49959, Aug. 12, 2004,

effective Sept. 13, 2004; para. (a) and para. (b)

introductory text revised, 69 FR 56481, Sept. 21, 2004,

effective Oct. 21, 2004; para. (a) revised, 70 FR 3880,

Jan. 27, 2005, effective Dec. 8, 2004; revised, 77 FR

48776, Aug. 14, 2012, effective Sept. 16, 2012]

§ 1.325 Other mistakes not corrected.

Mistakes other than those provided for in §§ 1.322,

1.323, 1.324, and not affording legal grounds for

reissue or for reexamination, will not be corrected

after the date of the patent.

[48 FR 2714, Jan. 20, 1983, effective date Feb. 27,

1983]

R-168January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.323

ARBITRATION AWARDS

§ 1.331 [Reserved]

[24 FR 10332, Dec. 22, 1959; 43 FR 20465, May

11, 1978; 47 FR 41272, Sept. 17, 1982; deleted, 57 FR

29642, July 6, 1992, effective Sept. 4, 1992]

§ 1.332 [Reserved]

[47 FR 41272, Sept. 17, 1982; deleted, 57 FR

29642, July 6, 1992, effective Sept. 4, 1992]

§ 1.333 [Reserved]

[Deleted, 57 FR 29642, July 6, 1992, effective

Sept. 4, 1992]

§ 1.334 [Reserved]

[47 FR 41272, Sept. 17, 1982, effective Oct. 1,

1982; para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr.

17, 1989; deleted, 57 FR 29642, July 6, 1992, effective

Sept. 4, 1992]

§ 1.335 Filing of notice of arbitration

awards.

(a) Written notice of any award by an arbitrator

pursuant to 35 U.S.C. 294 must be ﬁled in the Patent

and Trademark Ofﬁce by the patentee or the

patentee’s assignee or licensee. If the award involves

more than one patent a separate notice must be ﬁled

for placement in the ﬁle of each patent. The notice

must set forth the patent number, the names of the

inventor and patent owner, and the names and

addresses of the parties to the arbitration. The notice

must also include a copy of the award.

(b) If an award by an arbitrator pursuant to 35

U.S.C. 294 is modiﬁed by a court, the party

requesting the modiﬁcation must ﬁle in the Patent

and Trademark Ofﬁce, a notice of the modiﬁcation

for placement in the ﬁle of each patent to which the

modiﬁcation applies. The notice must set forth the

patent number, the names of the inventor and patent

owner, and the names and addresses of the parties

to the arbitration. The notice must also include a

copy of the court’s order modifying the award.

U.S.C. 294 shall be unenforceable until any notices

required by paragraph (a) or (b) of this section are

ﬁled in the Patent and Trademark Ofﬁce. If any

required notice is not ﬁled by the party designated

in paragraph (a) or (b) of this section, any party to

the arbitration proceeding may ﬁle such a notice.

[48 FR 2718, Jan. 20, 1983, effective Feb. 8, 1983]

AMENDMENT OF RULES

§ 1.351 Amendments to rules will be

published.

All amendments to the regulations in this part will

be published in the Ofﬁcial Gazette and in the

Federal Register.

§ 1.352 [Reserved]

[Para. (a) amended, 58 FR 54504, Oct. 22, 1993,

effective Jan. 3, 1994; removed and reserved, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997]

MAINTENANCE FEES

§ 1.362 Time for payment of maintenance

fees.

(a) Maintenance fees as set forth in §§ 1.20(e)

through (g) are required to be paid in all patents

based on applications ﬁled on or after December

12, 1980, except as noted in paragraph (b) of this

section, to maintain a patent in force beyond 4, 8

and 12 years after the date of grant.

(b) Maintenance fees are not required for any

plant patents or for any design patents.

payment of maintenance fees are as follows:

(1) For an application not claiming beneﬁt

of an earlier application, the actual United States

ﬁling date of the application.

(2) For an application claiming beneﬁt of an

earlier foreign application under 35 U.S.C. 119, the

United States ﬁling date of the application.

(3) For a continuing (continuation, division,

continuation-in-part) application claiming the beneﬁt

of a prior patent application under 35 U.S.C. 120,

the actual United States ﬁling date of the continuing

application.

January 2018R-169

§ 1.362CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(4) For a reissue application, including a

continuing reissue application claiming the beneﬁt

of a reissue application under 35 U.S.C. 120, [the]

United States ﬁling date of the original non-reissue

application on which the patent reissued is based.

(5) For an international application which

has entered the United States as a Designated Ofﬁce

under 35 U.S.C. 371, the international ﬁling date

granted under Article 11(1) of the Patent

Cooperation Treaty which is considered to be the

United States ﬁling date under 35 U.S.C. 363.

(d) Maintenance fees may be paid in patents

without surcharge during the periods extending

respectively from:

(1) 3 years through 3 years and 6 months

after grant for the ﬁrst maintenance fee,

(2) 7 years through 7 years and 6 months

after grant for the second maintenance fee, and

(3) 11 years through 11 years and 6 months

after grant for the third maintenance fee.

(e) Maintenance fees may be paid with the

surcharge set forth in § 1.20(h) during the respective

grace periods after:

(1) 3 years and 6 months and through the

day of the 4th anniversary of the grant for the ﬁrst

maintenance fee.

(2) 7 years and 6 months and through the

day of the 8th anniversary of the grant for the second

maintenance fee, and

(3) 11 years and 6 months and through the

day of the 12th anniversary of the grant for the third

maintenance fee.

(f) If the last day for paying a maintenance fee

without surcharge set forth in paragraph (d) of this

section, or the last day for paying a maintenance fee

with surcharge set forth in paragraph (e) of this

section, falls on a Saturday, Sunday, or a federal

holiday within the District of Columbia, the

maintenance fee and any necessary surcharge may

be paid under paragraph (d) or paragraph (e)

respectively on the next succeeding day which is

not a Saturday, Sunday, or Federal holiday.

(g) Unless the maintenance fee and any

applicable surcharge is paid within the time periods

set forth in paragraphs (d), (e) or (f) of this section,

the patent will expire as of the end of the grace

period set forth in paragraph (e) of this section. A

patent which expires for the failure to pay the

maintenance fee will expire at the end of the same

date (anniversary date) the patent was granted in the

4th, 8th, or 12th year after grant.

(h) The periods speciﬁed in §§ 1.362(d) and (e)

with respect to a reissue application, including a

continuing reissue application thereof, are counted

from the date of grant of the original non-reissue

application on which the reissued patent is based.

[49 FR 34724, Aug. 31, 1984, added effective Nov.

1, 1984; paras. (a) and (e), 56 FR 65142, Dec. 13, 1991,

effective Dec. 16, 1991; paras. (c)(4) and (e) revised and

para. (h) added, 58 FR 54504, Oct. 22, 1993, effective

Jan. 3, 1994; para. (b) revised, 82 FR 52780, Nov. 14,

2017, effective Jan. 16, 2018]

§ 1.363 Fee address for maintenance fee

purposes.

(a) All notices, receipts, refunds, and other

communications relating to payment or refund of

maintenance fees will be directed to the

correspondence address used during prosecution of

the application as indicated in § 1.33(a) unless:

(1) A fee address for purposes of payment

of maintenance fees is set forth when submitting the

issue fee, or

(2) A change in the correspondence address

for all purposes is ﬁled after payment of the issue

fee, or

(3) A fee address or a change in the “fee

address” is ﬁled for purposes of receiving notices,

receipts and other correspondence relating to the

payment of maintenance fees after the payment of

the issue fee, in which instance, the latest such

address will be used.

(b) An assignment of a patent application or

patent does not result in a change of the

“correspondence address” or “fee address” for

maintenance fee purposes.

with a Customer Number.

[49 FR 34725, Aug. 31, 1984, added effective Nov.

1, 1984; para. (c) added, 69 FR 29865, May 26, 2004,

effective June 25, 2004]

R-170January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.363

§ 1.366 Submission of maintenance fees.

(a) The patentee may pay maintenance fees and

any necessary surcharges, or any person or

organization may pay maintenance fees and any

necessary surcharges on behalf of a patentee. A

maintenance fee transmittal letter may be signed by

a juristic applicant or patent owner. A patentee need

not ﬁle authorization to enable any person or

organization to pay maintenance fees and any

necessary surcharges on behalf of the patentee.

(b) A maintenance fee and any necessary

surcharge submitted for a patent must be submitted

in the amount due on the date the maintenance fee

and any necessary surcharge are paid. A

maintenance fee or surcharge may be paid in the

manner set forth in § 1.23 or by an authorization to

charge a deposit account established pursuant to §

1.25. Payment of a maintenance fee and any

necessary surcharge or the authorization to charge

a deposit account must be submitted within the

periods set forth in § 1.362(d), (e), or (f). Any

payment or authorization of maintenance fees and

surcharges ﬁled at any other time will not be

accepted and will not serve as a payment of the

maintenance fee except insofar as a delayed payment

of the maintenance fee is accepted by the Director

in an expired patent pursuant to a petition ﬁled under

§ 1.378. Any authorization to charge a deposit

account must authorize the immediate charging of

the maintenance fee and any necessary surcharge

to the deposit account. Payment of less than the

required amount, payment in a manner other than

that set forth in § 1.23, or in the ﬁling of an

authorization to charge a deposit account having

insufﬁcient funds will not constitute payment of a

maintenance fee or surcharge on a patent. The

procedures set forth in § 1.8 or § 1.10 may be

utilized in paying maintenance fees and any

necessary surcharges.

necessary surcharges, identiﬁcation of the patents

for which maintenance fees are being paid must

include the patent number, and the application

number of the United States application for the

patent on which the maintenance fee is being paid.

If the payment includes identiﬁcation of only the

patent number (i.e., does not identify the application

number of the United States application for the

patent on which the maintenance fee is being paid),

the Ofﬁce may apply the payment to the patent

identiﬁed by patent number in the payment or may

return the payment.

(d) Payment of maintenance fees and any

surcharges should identify the fee being paid for

each patent as to whether it is the 3 1/2-, 7 1/2-, or

11 1/2-year fee, whether small entity status is being

changed or claimed, the amount of the maintenance

fee and any surcharge being paid, and any assigned

customer number. If the maintenance fee and any

necessary surcharge is being paid on a reissue patent,

the payment must identify the reissue patent by

reissue patent number and reissue application

number as required by paragraph (c) of this section

and should also include the original patent number.

(e) Maintenance fee payments and surcharge

payments relating thereto must be submitted separate

from any other payments for fees or charges,

whether submitted in the manner set forth in § 1.23

or by an authorization to charge a deposit account.

If maintenance fee and surcharge payments for more

than one patent are submitted together, they should

be submitted on as few sheets as possible with the

patent numbers listed in increasing patent number

order. If the payment submitted is insufﬁcient to

cover the maintenance fees and surcharges for all

the listed patents, the payment will be applied in the

order the patents are listed, beginning at the top of

the listing.

(f) Notiﬁcation of any change in status resulting

in loss of entitlement to small entity status must be

ﬁled in a patent prior to paying, or at the time of

paying, the earliest maintenance fee due after the

date on which status as a small entity is no longer

appropriate. See § 1.27(g).

(g) Maintenance fees and surcharges relating

thereto will not be refunded except in accordance

with §§ 1.26 and 1.28(a).

[49 FR 34725, Aug. 31, 1984, added effective Nov.

1, 1984; para. (b) amended, 58 FR 54494, Oct. 22, 1993,

effective Nov. 22, 1993; paras. (b) - (d) revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (c)

revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8,

2000; para. (f) revised, 65 FR 78958, Dec. 18, 2000; para.

(b) revised, 68 FR 14332, Mar. 25, 2003, effective May

1, 2003; paras. (a) and (b) revised, 78 FR 62368, Oct. 21,

2013, effective Dec. 18, 2013]

January 2018R-171

§ 1.366CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 1.377 Review of decision refusing to accept

and record payment of a maintenance fee

ﬁled prior to expiration of patent.

(a) Any patentee who is dissatisﬁed with the

refusal of the Patent and Trademark Ofﬁce to accept

and record a maintenance fee which was ﬁled prior

to the expiration of the patent may petition the

Director to accept and record the maintenance fee.

(b) Any petition under this section must be ﬁled

within two months of the action complained of, or

within such other time as may be set in the action

complained of, and must be accompanied by the fee

set forth in § 1.17(g). The petition may include a

request that the petition fee be refunded if the refusal

to accept and record the maintenance fee is

determined to result from an error by the Patent and

Trademark Ofﬁce.

comply with the requirements of § 1.181(b) and

must be signed by an attorney or agent registered

to practice before the Patent and Trademark Ofﬁce,

or by the patentee, the assignee, or other party in

interest.

[49 FR 34725, Aug. 31, 1984, added effective Nov.

1, 1984; para. (c) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; para. (a) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; para. (b) revised,

69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]

§ 1.378 Acceptance of delayed payment of

maintenance fee in expired patent to reinstate

patent.

(a) The Director may accept the payment of any

maintenance fee due on a patent after expiration of

the patent if, upon petition, the delay in payment of

the maintenance fee is shown to the satisfaction of

the Director to have been unintentional. If the

Director accepts payment of the maintenance fee

upon petition, the patent shall be considered as not

having expired, but will be subject to the conditions

set forth in 35 U.S.C. 41(c)(2).

(b) Any petition to accept an unintentionally

delayed payment of a maintenance fee must include:

(1) The required maintenance fee set forth

in § 1.20(e) through (g);

(2) The petition fee as set forth in § 1.17(m);

and

(3) A statement that the delay in payment of

the maintenance fee was unintentional. The Director

may require additional information where there is

a question whether the delay was unintentional.

signed in compliance with § 1.33(b).

(d) Reconsideration of a decision refusing to

accept a delayed maintenance fee may be obtained

by ﬁling a petition for reconsideration within two

months of the decision, or such other time as set in

the decision refusing to accept the delayed payment

of the maintenance fee.

(e) If the delayed payment of the maintenance

fee is not accepted, the maintenance fee will be

refunded following the decision on the petition for

reconsideration, or after the expiration of the time

for ﬁling such a petition for reconsideration, if none

is ﬁled.

[49 FR 34726, Aug. 31, 1984, added effective Nov.

1, 1984; para. (a), 50 FR 9383, Mar.7, 1985, effective

May 8, 1985; paras. (b) and (c), 53 FR 47810, Nov. 28,

1988, effective Jan. 1, 1989; paras. (a) - (c) and (e), 56

FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; paras.

(a) - (c) and (e), 58 FR 44277, Aug. 20, 1993, effective

Sept. 20, 1993; para. (d) revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; paras. (a) & (e) revised, 68

FR 14332, Mar. 25, 2003, effective May 1, 2003; para.

(e) revised, 69 FR 56536, Sept. 21, 2004, effective Nov.

22, 2004; revised, 78 FR 62368, Oct. 21, 2013, effective

Dec. 18, 2013]

Subpart C — International Processing

Provisions

GENERAL INFORMATION

§ 1.401 Deﬁnitions of terms under the Patent

Cooperation Treaty.

(a) The abbreviation PCT and the term Treaty

mean the Patent Cooperation Treaty.

(b) International Bureau means the World

Intellectual Property Organization located in

Geneva, Switzerland.

of instructions for operating under the Patent

Cooperation Treaty referred to in PCT Rule 89.

R-172January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.377

(d) Request, when capitalized, means that

element of the international application described

in PCT Rules 3 and 4.

(e) International application, as used in this

subchapter is deﬁned in § 1.9(b).

(f) Priority date for the purpose of computing

time limits under the Patent Cooperation Treaty is

deﬁned in PCT Art. 2(xi). Note also § 1.465.

(g) Demand, when capitalized, means that

document ﬁled with the International Preliminary

Examining Authority which requests an international

preliminary examination.

(h) Annexes means amendments made to the

claims, description or the drawings before the

International Preliminary Examining Authority.

(i) Other terms and expressions in this subpart

C not deﬁned in this section are to be taken in the

sense indicated in PCT Art. 2 and 35 U.S.C. 351.

[43 FR 20458, May 11, 1978; 52 FR 20047, May

28, 1987]

§ 1.412 The United States Receiving Ofﬁce.

(a) The United States Patent and Trademark

Ofﬁce is a Receiving Ofﬁce only for applicants who

are residents or nationals of the United States of

America.

(b) The Patent and Trademark Ofﬁce, when

acting as a Receiving Ofﬁce, will be identiﬁed by

the full title “United States Receiving Ofﬁce” or by

the abbreviation “RO/US.”

include:

(1) According of international ﬁling dates

to international applications meeting the

requirements of PCT Art. 11(1) and PCT Rule 20;

(2) Assuring that international applications

meet the standards for format and content of PCT

Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, and

portions of PCT Rules 3 through 11;

(3) Collecting and, when required,

transmitting fees due for processing international

applications (PCT Rule 14, 15, 16);

(4) Transmitting the record and search copies

to the International Bureau and International

Searching Authority, respectively (PCT Rules 22

and 23); and

(5) Determining compliance with applicable

requirements of part 5 of this chapter.

(6) Reviewing and, unless prescriptions

concerning national security prevent the application

from being so transmitted (PCT Rule 19.4),

transmitting the international application to the

International Bureau for processing in its capacity

as a Receiving Ofﬁce:

(i) Where the United States Receiving

Ofﬁce is not the competent Receiving Ofﬁce under

PCT Rule 19.1 or 19.2 and § 1.421(a); or

(ii) Where the international application

is not in English but is in a language accepted under

PCT Rule 12.1(a) by the International Bureau as a

Receiving Ofﬁce; or

(iii) Where there is agreement and

authorization in accordance with PCT Rule

19.4(a)(iii).

[Para. (c)(6) added, 60 FR 21438, May 2, 1995,

effective June 1, 1995; para. (c)(6) revised, 63 FR 29614,

June 1, 1998, effective July 1, 1998 (adopted as ﬁnal, 63

FR 66040, Dec. 1, 1998)]

§ 1.413 The United States International

Searching Authority.

(a) Pursuant to appointment by the Assembly,

the United States Patent and Trademark Ofﬁce will

act as an International Searching Authority for

international applications ﬁled in the United States

Receiving Ofﬁce and in other Receiving Ofﬁces as

may be agreed upon by the Director, in accordance

with the agreement between the Patent and

Trademark Ofﬁce and the International Bureau (PCT

Art. 16(3)(b)).

(b) The Patent and Trademark Ofﬁce, when

acting as an International Searching Authority, will

be identiﬁed by the full title “United States

International Searching Authority” or by the

abbreviation “ISA/US.”

Searching Authority include:

(1) Approving or establishing the title and

abstract;

(2) Considering the matter of unity of

invention;

January 2018R-173

§ 1.413CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(3) Conducting international and

international-type searches and preparing

international and international-type search reports

(PCT Art. 15, 17 and 18, and PCT Rules 25, 33 to

45 and 47), and issuing declarations that no

international search report will be established (PCT

Article 17(2)(a));

(4) Preparing written opinions of the

International Searching Authority in accordance

with PCT Rule 43 bis (when necessary); and

(5) Transmitting the international search

report and the written opinion of the International

Searching Authority to the applicant and the

International Bureau.

[Para. (a) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; paras. (a) & (c) revised, 68 FR

58991, Oct. 20, 2003, effective Jan. 1, 2004]

§ 1.414 The United States Patent and

Trademark Ofﬁce as a Designated Ofﬁce or

Elected Ofﬁce.

(a) The United States Patent and Trademark

Ofﬁce will act as a Designated Ofﬁce or Elected

Ofﬁce for international applications in which the

United States of America has been designated or

elected as a State in which patent protection is

desired.

(b) The United States Patent and Trademark

Ofﬁce, when acting as a Designated Ofﬁce or

Elected Ofﬁce during international processing will

be identiﬁed by the full title “United States

Designated Ofﬁce” or by the abbreviation “DO/US”

or by the full title “United States Elected Ofﬁce” or

by the abbreviation “EO/US.”

Designated Ofﬁce or Elected Ofﬁce in respect to

international applications in which the United States

of America has been designated or elected, include:

(1) Receiving various notiﬁcations

throughout the international stage and

(2) National stage processing for

international applications entering the national stage

under 35 U.S.C. 371.

[52 FR 20047, May 28, 1987, effective July 1,

1987; para. (c)(2) revised, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012]

§ 1.415 The International Bureau.

(a) The International Bureau is the World

Intellectual Property Organization located at

Geneva, Switzerland. It is the international

intergovernmental organization which acts as the

coordinating body under the Treaty and the

Regulations (PCT Art. 2(xix) and 35 U.S.C. 351(h)).

(b) The major functions of the International

Bureau include:

(1) Publishing of international applications

and the International Gazette;

(2) Transmitting copies of international

applications to Designated Ofﬁces;

(3) Storing and maintaining record copies;

and

(4) Transmitting information to authorities

pertinent to the processing of speciﬁc international

applications.

§ 1.416 The United States International

Preliminary Examining Authority.

(a) Pursuant to appointment by the Assembly,

the United States Patent and Trademark Ofﬁce will

act as an International Preliminary Examining

Authority for international applications ﬁled in the

United States Receiving Ofﬁce and in other

Receiving Ofﬁces as may be agreed upon by the

Director, in accordance with agreement between the

Patent and Trademark Ofﬁce and the International

Bureau.

(b) The United States Patent and Trademark

Ofﬁce, when acting as an International Preliminary

Examining Authority, will be identiﬁed by the full

title “United States International Preliminary

Examining Authority” or by the abbreviation

“IPEA/US.”

Preliminary Examining Authority include:

(1) Receiving and checking for defects in

the Demand;

(2) Forwarding Demands in accordance with

PCT Rule 59.3;

(3) Collecting the handling fee for the

International Bureau and the preliminary

R-174January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.414

examination fee for the United States International

Preliminary Examining Authority;

(4) Informing applicant of receipt of the

Demand;

(5) Considering the matter of unity of

invention;

(6) Providing an international preliminary

examination report which is a non-binding opinion

on the questions of whether the claimed invention

appears: to be novel, to involve an inventive step

(to be nonobvious), and to be industrially applicable;

and

(7) Transmitting the international

preliminary examination report to applicant and the

International Bureau.

[Added 52 FR 20047, May 28, 1987; para. (c)

revised, 63 FR 29614, June 1, 1998, effective July 1998

(adopted as ﬁnal, 63 FR 66040, Dec. 1, 1998); para. (a)

revised, 68 FR 14332, Mar. 25, 2003, effective May 1,

2003]

§ 1.417 Submission of translation of

international publication.

The submission of an English language translation

of the publication of an international application

pursuant to 35 U.S.C. 154(d)(4) must clearly identify

the international application to which it pertains (§

1.5(a)) and be clearly identiﬁed as a submission

pursuant to 35 U.S.C. 154(d)(4). Otherwise, the

submission will be treated as a ﬁling under 35

U.S.C. 111(a). Such submissions should be marked

“Mail Stop PCT.”

[Added 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000; revised 67 FR 520, Jan. 4, 2002, effective

Apr. 1, 2002; revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; revised, 68 FR 70996, Dec. 22,

2003, effective Jan. 21, 2004]

§ 1.419 Display of currently valid control

number under the Paperwork Reduction Act.

(a) Pursuant to the Paperwork Reduction Act of

1995 (44 U.S.C. 3501 et seq.), the collection of

information in this subpart has been reviewed and

approved by the Ofﬁce of Management and Budget

under control number 0651-0021.

(b) Notwithstanding any other provision of law,

no person is required to respond to nor shall a person

be subject to a penalty for failure to comply with a

collection of information subject to the requirements

of the Paperwork Reduction Act unless that

collection of information displays a currently valid

Ofﬁce of Management and Budget control number.

This section constitutes the display required by 44

U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the

collection of information under Ofﬁce of

Management and Budget control number 0651-0021

(see 5 CFR 1320.5(b)(2)(ii)(D)).

[Added, 63 FR 29614, June 1, 1998, effective July

1, 1998 (adopted as ﬁnal, 63 FR 66040, Dec. 1, 1998)]

WHO MAY FILE AN INTERNATIONAL

APPLICATION

§ 1.421 Applicant for international

application.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) Only residents or nationals of the United

States of America may ﬁle international applications

in the United States Receiving Ofﬁce. If an

international application does not include an

applicant who is indicated as being a resident or

national of the United States of America, and at least

one applicant:

(1) Has indicated a residence or nationality

in a PCT Contracting State, or

(2) Has no residence or nationality indicated,

applicant will be so notiﬁed and, if the international

application includes a fee amount equivalent to that

required by § 1.445(a)(4), the international

application will be forwarded for processing to the

International Bureau acting as a Receiving Ofﬁce

(see also § 1.412(c)(6)).

(b) Although the United States Receiving Ofﬁce

will accept international applications ﬁled by any

applicant who is a resident or national of the United

States of America for international processing, for

the purposes of the designation of the United States,

an international application will be accepted by the

Patent and Trademark Ofﬁce for the national stage

only if the applicant is the inventor or other person

January 2018R-175

§ 1.421CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

as provided in § 1.422 or § 1.424. Joint inventors

must jointly apply for an international application.

applicant may sign the international application

Request and ﬁle the international application for the

applicant. A separate power of attorney from each

applicant may be required.

(d) Any indication of different applicants for

the purpose of different Designated Ofﬁces must be

shown on the Request portion of the international

application.

(e) Requests for changes in the indications

concerning the applicant, agent, or common

representative of an international application shall

be made in accordance with PCT Rule 92 bis and

may be required to be signed by all applicants.

(f) Requests for withdrawals of the international

application, designations, priority claims, the

Demand, or elections shall be made in accordance

with PCT Rule 90 bis and must be signed by all

applicants. A separate power of attorney from the

applicants will be required for the purposes of any

request for a withdrawal in accordance with PCT

Rule 90 bis which is not signed by all applicants.

[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988,

effective Jan. 1, 1989; para. (a) amended, 60 FR 21438,

May 2, 1995, effective June 1, 1995; paras. (b)-(g)

revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1,

2004; para. (a)(2) revised, 68 FR 67805, Dec. 4, 2003,

effective Jan. 1, 2004; revised, 77 FR 48776, Aug. 14,

2012, effective Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.421 (pre-AIA) for the rule otherwise in effect.]

§ 1.421 (pre-AIA) Applicant for

international application.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after Sept. 16,

2012*]

(a) Only residents or nationals of the United

States of America may ﬁle international applications

in the United States Receiving Ofﬁce. If an

international application does not include an

applicant who is indicated as being a resident or

national of the United States of America, and at least

one applicant:

(1) Has indicated a residence or nationality

in a PCT Contracting State, or

(2) Has no residence or nationality indicated,

applicant will be so notiﬁed and, if the international

application includes a fee amount equivalent to that

required by § 1.445(a)(4), the international

application will be forwarded for processing to the

International Bureau acting as a Receiving Ofﬁce

(see also § 1.412(c)(6)).

(b) Although the United States Receiving Ofﬁce

will accept international applications ﬁled by any

resident or national of the United States of America

for international processing, for the purposes of the

designation of the United States, an international

application must be ﬁled, and will be accepted by

the Patent and Trademark Ofﬁce for the national

stage only if ﬁled, by the inventor or as provided in

§§ 1.422 or 1.423. Joint inventors must jointly apply

for an international application.

the United States, international applications may be

ﬁled by the assignee or owner.

(d) A registered attorney or agent of the

applicant may sign the international application

Request and ﬁle the international application for the

applicant. A separate power of attorney from each

applicant may be required.

(e) Any indication of different applicants for

the purpose of different Designated Ofﬁces must be

shown on the Request portion of the international

application.

(f) Requests for changes in the indications

concerning the applicant, agent, or common

representative of an international application shall

be made in accordance with PCT Rule 92 bis and

may be required to be signed by all applicants.

(g) Requests for withdrawals of the international

application, designations, priority claims, the

Demand, or elections shall be made in accordance

with PCT Rule 90 bis and must be signed by all

applicants. A separate power of attorney from the

applicants will be required for the purposes of any

request for a withdrawal in accordance with PCT

Rule 90 bis which is not signed by all applicants.

The submission of a separate power of attorney may

be excused upon the request of another applicant

where one or more inventors cannot be found or

reached after diligent effort. Such a request must be

R-176January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.421 (pre-AIA)

accompanied by a statement explaining to the

satisfaction of the Director the lack of the signature

concerned.

[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988,

effective Jan. 1, 1989; para. (a) amended, 60 FR 21438,

May 2, 1995, effective June 1, 1995; paras. (b)-(g)

revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1,

2004; para. (a)(2) revised, 68 FR 67805, Dec. 4, 2003,

effective Jan. 1, 2004]

[*See § 1.421 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.422 Legal representative as applicant in

an international application.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

If an inventor is deceased or under legal incapacity,

the legal representative of the inventor may be an

applicant in an international application which

designates the United States of America.

[Revised, 77 FR 48776, Aug. 14, 2012, effective

Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.422 (pre-AIA) for the rule otherwise in effect.]

§ 1.422 (pre-AIA) When the inventor is dead.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

In case of the death of the inventor, the legal

representative (executor, administrator, etc.) of the

deceased inventor may ﬁle an international

application which designates the United States of

America.

[*See § 1.422 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012.]

§ 1.423 [Removed and Reserved]

[Effective Sept. 16, 2012, § 1.423 was removed

and reserved with respect to patent applications ﬁled

under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012.

See 77 FR 48776, Aug. 14, 2012. Editor assumes "1.423"

was intended instead of "1.432" in the ﬁrst column of

page 48776. For the rule otherwise in effect, see § 1.423

(pre-AIA).]

§ 1.423 (pre-AIA) When the inventor is

insane or legally incapacitated.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

In case an inventor is insane or otherwise legally

incapacitated, the legal representative (guardian,

conservator, etc.) of such inventor may ﬁle an

international application which designates the United

States of America.

[*Removed and reserved with respect to patent

applications ﬁled under 35 U.S.C. 111(a) or 363 on or

after Sept. 16, 2012, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012]

§ 1.424 Assignee, obligated assignee, or

person having sufﬁcient proprietary interest

as applicant in an international application.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a)) A person to whom the inventor has assigned

or is under an obligation to assign the invention may

be an applicant in an international application which

designates the United States of America. A person

who otherwise shows sufﬁcient proprietary interest

in the matter may be an applicant in an international

application which designates the United States of

America on proof of the pertinent facts and a

showing that such action is appropriate to preserve

the rights of the parties.

(b) Neither any showing required under

paragraph (a) of this section nor documentary

evidence of ownership or proprietary interest will

be required or considered by the Ofﬁce in the

international stage, but will be required in the

national stage in accordance with the conditions and

requirements of § 1.46.

[Added, 77 FR 48776, Aug. 14, 2012, effective

Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012.]

January 2018R-177

§ 1.424CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 1.425 [Reserved]

[Removed and reserved, 68 FR 58991, Oct. 20,

2003, effective Jan. 1, 2004]

THE INTERNATIONAL APPLICATION

§ 1.431 International application

requirements.

[Editor Note: Para. (b)(3)(iii) below is applicable

only to patent applications ﬁled under 35 U.S.C. 111(a)

or 363 on or after September 16, 2012*]

(a) An international application shall contain,

as speciﬁed in the Treaty and the Regulations, a

Request, a description, one or more claims, an

abstract, and one or more drawings (where required).

(PCT Art. 3(2) and Section 207 of the

Administrative Instructions.)

(b) An international ﬁling date will be accorded

by the United States Receiving Ofﬁce, at the time

of receipt of the international application, provided

that:

(1) At least one applicant (§ 1.421) is a

United States resident or national and the papers

ﬁled at the time of receipt of the international

application so indicate (35 U.S.C. 361(a), PCT Art.

11(1)(i)).

(2) The international application is in the

English language (35 U.S.C. 361(c), PCT Art.

11(1)(ii)).

(3) The international application contains at

least the following elements (PCT Art. 11(1)(iii)):

(i) An indication that it is intended as an

international application (PCT Rule 4.2);

(ii) The designation of at least one

Contracting State of the International Patent

Cooperation Union (§ 1.432);

(iii) The name of the applicant, as

prescribed (note §§ 1.421, 1.422, and 1.424);

(iv) A part which on the face of it appears

to be a description; and

(v) A part which on the face of it appears

to be a claim.

Rule 15.2) and the transmittal and search fees (§

1.445) may be made in full at the time the

international application papers required by

paragraph (b) of this section are deposited or within

one month thereafter. The international ﬁling,

transmittal, and search fee payable is the

international ﬁling, transmittal, and search fee in

effect on the receipt date of the international

application.

(1) If the international ﬁling, transmittal and

search fees are not paid within one month from the

date of receipt of the international application and

prior to the sending of a notice of deﬁciency which

imposes a late payment fee, applicant will be

notiﬁed and given one month within which to pay

the deﬁcient fees plus the late payment fee. Subject

to paragraph (c)(2) of this section, the late payment

fee will be equal to the greater of:

(i) Fifty percent of the amount of the

deﬁcient fees; or

(ii) An amount equal to the transmittal

fee;[.]

(2) The late payment fee shall not exceed an

amount equal to ﬁfty percent of the international

ﬁling fee not taking into account any fee for each

sheet of the international application in excess of

thirty sheets (PCT Rule 16 bis).

(3) The one-month time limit set pursuant

to paragraph (c) of this section to pay deﬁcient fees

may not be extended.

(d) If the payment needed to cover the

transmittal fee, the international ﬁling fee, the search

fee, and the late payment fee pursuant to paragraph

with PCT Rule 16 bis.1(e), the Receiving Ofﬁce

will declare the international application withdrawn

under PCT Article 14(3)(a).

[43 FR 20458, May 11, 1978; paras. (b), (c), (d)

and (e), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985;

para. (d) amended, 52 FR 20047, May 28, 1987; paras.

(b)(1), (b)(3)(ii), (c) and (d) amended, para. (e) deleted,

58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras.

July 1, 1998 (adopted as ﬁnal, 63 FR 66040, Dec. 1,

1998); paras. (b)(3), (c) & (d) revised, 68 FR 58991, Oct.

20, 2003, effective Jan. 1, 2004; para. (c)(2) corrected,

68 FR 67805, Dec. 4, 2003; para. (b)(3)(iii) revised, 77

FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The revisions to para. (b)(3)(iii) effective Sept.

16, 2012 are applicable only to patent applications ﬁled

R-178January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.425

under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012.

See § 1.431(pre-AIA) for para. (b)(3)(iii) otherwise in

effect.]

§ 1.431 (pre-AIA) International application

requirements.

[Editor Note: Para. (b)(3)(iii) below is not

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012*]

(a) An international application shall contain,

as speciﬁed in the Treaty and the Regulations, a

Request, a description, one or more claims, an

abstract, and one or more drawings (where required).

(PCT Art. 3(2) and Section 207 of the

Administrative Instructions.)

(b) An international ﬁling date will be accorded

by the United States Receiving Ofﬁce, at the time

of receipt of the international application, provided

that:

(1) At least one applicant is a United States

resident or national and the papers ﬁled at the time

of receipt of the international application so indicate

(35 U.S.C. 361(a), PCT Art. 11(1)(i)).

(2) The international application is in the

English language (35 U.S.C. 361(c), PCT Art.

11(1)(ii)).

(3) The international application contains at

least the following elements (PCT Art. 11(1)(iii)):

(i) An indication that it is intended as an

international application (PCT Rule 4.2);

(ii) The designation of at least one

Contracting State of the International Patent

Cooperation Union (§ 1.432);

(iii) The name of the applicant, as

prescribed (note §§ 1.421-1.423);

(iv) A part which on the face of it appears

to be a description; and

(v) A part which on the face of it appears

to be a claim.

Rule 15.2) and the transmittal and search fees (§

1.445) may be made in full at the time the

international application papers required by

paragraph (b) of this section are deposited or within

one month thereafter. The international ﬁling,

transmittal, and search fee payable is the

international ﬁling, transmittal, and search fee in

effect on the receipt date of the international

application.

(1) If the international ﬁling, transmittal and

search fees are not paid within one month from the

date of receipt of the international application and

prior to the sending of a notice of deﬁciency which

imposes a late payment fee, applicant will be

notiﬁed and given one month within which to pay

the deﬁcient fees plus the late payment fee. Subject

to paragraph (c)(2) of this section, the late payment

fee will be equal to the greater of:

(i) Fifty percent of the amount of the

deﬁcient fees; or

(ii) An amount equal to the transmittal

fee.

(2) The late payment fee shall not exceed an

amount equal to ﬁfty percent of the international

ﬁling fee not taking into account any fee for each

sheet of the international application in excess of

thirty sheets (PCT Rule 16 bis).

(3) The one-month time limit set pursuant

to paragraph (c) of this section to pay deﬁcient fees

may not be extended.

(d) If the payment needed to cover the

transmittal fee, the international ﬁling fee, the search

fee, and the late payment fee pursuant to paragraph

with PCT Rule 16 bis.1(e), the Receiving Ofﬁce

will declare the international application withdrawn

under PCT Article 14(3)(a).

[43 FR 20458, May 11, 1978; paras. (b), (c), (d)

and (e), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985;

para. (d) amended, 52 FR 20047, May 28, 1987; paras.

(b)(1), (b)(3)(ii), (c) and (d) amended, para. (e) deleted,

58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras.

July 1, 1998 (adopted as ﬁnal, 63 FR 66040, Dec. 1,

1998); paras. (b)(3), (c) & (d) revised, 68 FR 58991, Oct.

20, 2003, effective Jan. 1, 2004; para. (c)(2) corrected,

68 FR 67805, Dec. 4, 2003]

[*See § 1.431 for more information and for para.

(b)(3)(iii) applicable to patent applications ﬁled under

35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

January 2018R-179

§ 1.431

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 1.432 Designation of States by ﬁling an

international application.

The ﬁling of an international application request

shall constitute:

(a) The designation of all Contracting States

that are bound by the Treaty on the international

ﬁling date;

(b) An indication that the international

application is, in respect of each designated State

to which PCT Article 43 or 44 applies, for the grant

of every kind of protection which is available by

way of the designation of that State; and

application is, in respect of each designated State

to which PCT Article 45(1) applies, for the grant of

a regional patent and also, unless PCT Article 45(2)

applies, a national patent.

[43 FR 20458, May 11, 1978; para. (b) amended

52 FR 20047, May 28, 1987; paras. (a), (b) amended and

para. (c) added, 58 FR 4335, Jan. 14, 1993, effective May

1, 1993; paras. (b) and (c) revised, para. (d) added, 63

FR 29614, June 1, 1998, effective July 1, 1998 (adopted

as ﬁnal, 63 FR 66040, Dec. 1, 1998); revised, 68 FR

58991, Oct. 20, 2003, effective Jan. 1, 2004]

§ 1.433 Physical requirements of

international application.

(a) The international application and each of the

documents that may be referred to in the check list

of the Request (PCT Rule 3.3(a)(ii)) shall be ﬁled

in one copy only.

(b) All sheets of the international application

must be on A4 size paper (21.0 x 29.7 cm.).

applications are set forth in PCT Rule 11 and

sections 201-207 of the Administrative Instructions.

§ 1.434 The request.

(a) The request shall be made on a standardized

form (PCT Rules 3 and 4). Copies of printed

Request forms are available from the United States

Patent and Trademark Ofﬁce. Letters requesting

printed forms should be marked “Mail Stop PCT.”

(b) The Check List portion of the Request form

should indicate each document accompanying the

international application on ﬁling.

names of States and dates, shall be indicated in the

Request as required by PCT Rule 4 and

Administrative Instructions 110 and 201.

(d) For the purposes of the designation of the

United States of America, an international

application shall include:

(1) The name of the inventor; and

(2) A reference to any prior-ﬁled national

application or international application designating

the United States of America, if the beneﬁt of the

ﬁling date for the prior-ﬁled application is to be

claimed.

(e) An international application may also include

in the Request a declaration of the inventors as

provided for in PCT Rule 4.17(iv).

[Para. (a) amended, 58 FR 4335, Jan. 14, 1993,

effective May 1, 1993; para. (d) revised, 66 FR 16004,

Mar. 22, 2001, effective Mar. 1, 2001; para. (d)(2)

revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28,

2001; paras. (a) & (d)(2) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003; para. (d) revised, para (e)

added, 68 FR 58991, Oct. 20, 2003, effective Jan. 1,

2004]

§ 1.435 The description.

(a) The application must meet the requirements

as to the content and form of the description set forth

in PCT Rules 5, 9, 10, and 11 and sections 204 and

208 of the Administrative Instructions.

(b) In international applications designating the

United States the description must contain upon

ﬁling an indication of the best mode contemplated

by the inventor for carrying out the claimed

invention.

[Para. (a) revised, 63 FR 29614, June 1, 1998,

effective July 1, 1998 (adopted as ﬁnal, 63 FR 66040,

Dec. 1, 1998)]

§ 1.436 The claims.

The requirements as to the content and format of

claims are set forth in PCT Art. 6 and PCT Rules 6,

9, 10 and 11 and shall be adhered to. The number

R-180January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.432

of the claims shall be reasonable, considering the

nature of the invention claimed.

§ 1.437 The drawings.

(a) Drawings are required when they are

necessary for the understanding of the invention

(PCT Art. 7).

(b) The physical requirements for drawings are

set forth in PCT Rule 11 and shall be adhered to.

[Revised, 72 FR 51559, Sept. 10, 2007, effective

Sept. 10, 2007]

§ 1.438 The abstract.

(a) Requirements as to the content and form of

the abstract are set forth in PCT Rule 8, and shall

be adhered to.

(b) Lack of an abstract upon ﬁling of an

international application will not affect the granting

of a ﬁling date. However, failure to furnish an

abstract within one month from the date of the

notiﬁcation by the Receiving Ofﬁce will result in

the international application being declared

withdrawn.

FEES

§ 1.445 International application ﬁling,

processing and search fees.

(a) The following fees and charges for

international applications are established by law or

by the Director under the authority of 35 U.S.C.

376:

(1) A transmittal fee (see35 U.S.C. 361(d)

and PCT Rule 14) consisting of:

(i) A basic portion:

(A) For an international application

having a receipt date that is on or after January 1,

2014:

By a micro entity (§ 1.29)..$60.00

By a small entity (§

1.27(a)).......................................................$120.00

By other than a small or micro

entity...........................................................$240.00

(B) For an international application

having a receipt date that is before January 1,

2014............................................................$240.00

(ii) A non-electronic ﬁling fee portion

for any international application designating the

United States of America that is ﬁled on or after

November 15, 2011, other than by the Ofﬁce

electronic ﬁling system, except for a plant

application:

By a small entity (§

1.27(a)).......................................................$200.00

By other than a small entity...$400.00

(2) A search fee (see35 U.S.C. 361(d) and

PCT Rule 16) :

(i) For an international application having

a receipt date that is on or after January 1, 2014:

By a micro entity (§ 1.29)....$520.00

By a small entity (§

1.27(a))....................................................$1,040.00

By other than a small or micro

entity........................................................$2,080.00

(ii) For an international application

having a receipt date that is before January 1,

2014.........................................................$2,080.00

(3) A supplemental search fee when

required, per additional invention:

(i) For an international application having

a receipt date that is on or after January 1, 2014:

By a micro entity (§ 1.29)....$520.00

By a small entity (§

1.27(a))....................................................$1,040.00

By other than a small or micro

entity........................................................$2,080.00

(ii) For an international application

having a receipt date that is before January 1,

2014:.......................................................$2,080.00.

(4) A fee equivalent to the transmittal fee in

paragraph (a)(1) of this section that would apply if

the USPTO was the Receiving Ofﬁce for transmittal

of an international application to the International

Bureau for processing in its capacity as a Receiving

Ofﬁce (PCT Rule 19.4).

(5) Late furnishing fee for providing a

sequence listing in response to an invitation under

PCT Rule 13 ter:

January 2018R-181

§ 1.445CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

By a micro entity (§ 1.29)............$75.00

By a small entity (§ 1.27(a))........150.00

By other than a small or micro

entity.............................................................300.00

(b) The international ﬁling fee shall be as

prescribed in PCT Rule 15.

[43 FR 20458, May 11, 1978; para. (a), 47 FR

41272, Sept. 17, 1982, effective Oct. 1, 1982; para. (a)(4)

- (6), 50 FR 9384, Mar. 7, 1985, effective May 8, 1985;

50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985; para.

(a) amended 52 FR 20047, May 28, 1987; paras. (a)(2)

and (3), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, Mar.

7, 1989, effective Apr. 17, 1989; para. (a), 56 FR 65142,

Dec. 13, 1991, effective Dec. 27, 1991; para. (a), 57 FR

38190, Aug. 21, 1992, effective Oct. 1, 1992; para. (a)(4)

added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993;

paras. (a)(1)-(3), 59 FR 43736, Aug. 25, 1994, effective

Oct. 1, 1994; para. (a)(5) added, 60 FR 21438, May 2,

1995, effective June 1, 1995; para. (a) amended, 60 FR

41018, Aug. 11, 1995, effective Oct. 1, 1995; para. (a)

amended, 61 FR 39585, July 30, 1996, effective Oct. 1,

1996; para. (a) amended, 62 FR 40450, July 29, 1997,

effective Oct. 1, 1997; para. (a) revised, 63 FR 29614,

June 1, 1998, effective July 1,1998 (adopted as ﬁnal, 63

FR 66040, Dec. 1, 1998); para. (a) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; revised, 68 FR

58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (a)(2)

revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8,

2004; paras. (a)(2) and (a)(3) revised, 72 FR 51559, Sept.

10, 2007, effective Nov. 9, 2007; paras. (a)(1) through

(a)(3) revised, 73 FR 67754, Nov. 12, 2008, effective

Jan. 12, 2009; para. (a) introductory text and (a)(1)

revised, 76 FR 70651, Nov. 15, 2011, effective Nov. 15,

2011; para. (a) introductory text and paras. (a)(1)(i),

(a)(2)-(4) and (b) revised, 78 FR 4212, Jan. 18, 2013,

effective Mar. 19, 2013; revised 78 FR 17102, Mar. 20,

2013, effective Mar. 20, 2013; para. (a)(5) added, 82 FR

52780, Nov. 14, 2017, effective Jan. 16, 2018]

§ 1.446 Refund of international application

ﬁling and processing fees.

(a) Money paid for international application

fees, where paid by actual mistake or in excess, such

as a payment not required by law or treaty and its

regulations, may be refunded. A mere change of

purpose after the payment of a fee will not entitle a

party to a refund of such fee. The Ofﬁce will not

refund amounts of twenty-ﬁve dollars or less unless

a refund is speciﬁcally requested and will not notify

the payor of such amounts. If the payor or party

requesting a refund does not provide the banking

information necessary for making refunds by

electronic funds transfer, the Ofﬁce may use the

banking information provided on the payment

instrument to make any refund by electronic funds

transfer.

(b) Any request for refund under paragraph (a)

of this section must be ﬁled within two years from

the date the fee was paid. If the Ofﬁce charges a

deposit account by an amount other than an amount

speciﬁcally indicated in an authorization under §

1.25(b), any request for refund based upon such

charge must be ﬁled within two years from the date

of the deposit account statement indicating such

charge and include a copy of that deposit account

statement. The time periods set forth in this

paragraph are not extendable.

be made if such refund is determined to be warranted

by the Director or the Director’s designee acting

under PCT Rule 40.2(c).

(d) The international and search fees will be

refunded if no international ﬁling date is accorded

or if the application is withdrawn before transmittal

of the record copy to the International Bureau (PCT

Rules 15.6 and 16.2). The search fee will be

refunded if the application is withdrawn before

transmittal of the search copy to the International

Searching Authority. The transmittal fee will not be

refunded.

(e) The handling fee (§ 1.482(b)) will be

refunded (PCT Rule 57.6) only if:

(1) The Demand is withdrawn before the

Demand has been sent by the International

Preliminary Examining Authority to the

International Bureau, or

(2) The Demand is considered not to have

been submitted (PCT Rule 54.4(a)).

[43 FR 20458, May 11, 1978; para. (b), 47 FR

41272, Sept. 17, 1982, effective Oct. 1, 1982; para.(b),

50 FR 9384, Mar. 7, 1985, effective May 8, 1985; 50 FR

31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (d)

amended and para. (e) added, 58 FR 4335, Jan. 14, 1993,

effective May 1, 1993; para (a) revised and para. (b)

added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,

2000; para. (c) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

R-182January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.446

PRIORITY

§ 1.451 The priority claim and priority

document in an international application.

(a) The claim for priority must, subject to

paragraph (d) of this section, be made on the

Request (PCT Rule 4.10) in a manner complying

with sections 110 and 115 of the Administrative

Instructions.

(b) Whenever the priority of an earlier United

States national application or international

application ﬁled with the United States Receiving

Ofﬁce is claimed in an international application, the

applicant may request in the Request or in a letter

of transmittal accompanying the international

application upon ﬁling with the United States

Receiving Ofﬁce or in a separate letter ﬁled in the

United States Receiving Ofﬁce not later than 16

months after the priority date, that the United States

Patent and Trademark Ofﬁce prepare a certiﬁed

copy of the prior application for transmittal to the

International Bureau (PCT Article 8 and PCT Rule

17). The fee for preparing a certiﬁed copy is set

forth in § 1.19(b)(1).

is not submitted together with the international

application on ﬁling, or, if the priority application

was ﬁled in the United States and a request and

appropriate payment for preparation of such a

certiﬁed copy do not accompany the international

application on ﬁling or are not ﬁled within 16

months of the priority date, the certiﬁed copy of the

priority document must be furnished by the applicant

to the International Bureau or to the United States

Receiving Ofﬁce within the time limit speciﬁed in

PCT Rule 17.1(a).

(d) The applicant may correct or add a priority

claim in accordance with PCT Rule 26 bis.1.

[43 FR 20458, May 11, 1978; 47 FR 40140, Sept.

10, 1982, effective Oct. 1, 1982; para. (b), 47 FR 41272,

Sept. 17, 1982, effective Oct. 1, 1982; paras. (b) & (c),

50 FR 9384, Mar. 7, 1985, effective May 8, 1985; para.

(b), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989;

para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective

May 1, 1993; para. (a) revised, para. (d) added, 63 FR

29614, June 1, 1998, effective July 1, 1998 (adopted as

ﬁnal, 63 FR 66040, Dec. 1, 1998); para. (b) revised, 66

FR 16004, Mar. 22, 2001, effective Mar. 1, 2001]

§ 1.452 Restoration of right of priority.

(a) If the international application has an

international ﬁling date which is later than the

expiration of the priority period as deﬁned by PCT

Rule 2.4 but within two months from the expiration

of the priority period, the right of priority in the

international application may be restored upon

request if the delay in ﬁling the international

application within the priority period was

unintentional.

(b) A request to restore the right of priority in

an international application under paragraph (a) of

this section must be ﬁled not later than two months

from the expiration of the priority period and must

include:

(1) A notice under PCT Rule 26 bis.1(a)

adding the priority claim, if the priority claim in

respect of the earlier application is not contained in

the international application;

(2) The petition fee as set forth in § 1.17(m);

and

(3) A statement that the delay in ﬁling the

international application within the priority period

was unintentional. The Director may require

additional information where there is a question

whether the delay was unintentional.

publication under PCT Article 21(2)(b), any

requirement under paragraph (b) of this section ﬁled

after the technical preparations for international

publication have been completed by the International

Bureau shall be considered as not having been

submitted in time.

[Added, 72 FR 51559 Sept. 10, 2007, effective

Nov. 9, 2007; para. (b)(2) revised and para. (d) removed,

78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

§ 1.453 Transmittal of documents relating

to earlier search or classiﬁcation.

(a) Subject to paragraph (c) of this section,

where an applicant has requested in an international

application ﬁled with the United States Receiving

Ofﬁce pursuant to PCT Rule 4.12 that an

International Searching Authority take into account

the results of an earlier search, the United States

Receiving Ofﬁce shall prepare and transmit to the

January 2018R-183

§ 1.453CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

International Searching Authority, as applicable, a

copy of the results of the earlier search and any

earlier classiﬁcation as provided under PCT Rule

23 bis.1.

(b) Subject to paragraph (c) of this section,

where an international application ﬁled with the

United States Receiving Ofﬁce claims the priority

of an earlier application ﬁled with the USPTO in

which the USPTO has carried out an earlier search

or has classiﬁed such earlier application, the United

States Receiving Ofﬁce shall prepare and transmit

to the International Searching Authority a copy of

the results of any such earlier search and earlier

classiﬁcation as provided under PCT Rule 23 bis.2.

prepare a copy of the results of an earlier search or

earlier classiﬁcation referred to in paragraphs (a)

and (b) of this section for transmittal to an

International Searching Authority from an

application preserved in conﬁdence (§ 1.14) unless

the international application contains written

authority granting the International Searching

Authority access to such results. Written authority

provided under this paragraph must be signed by:

(1) An applicant in the international

application who is also an applicant in the

application preserved in conﬁdence; or

(2) A person set forth in § 1.14(c) permitted

to grant access to the application preserved in

conﬁdence.

[Added 82 FR 24249, May 26, 2017, effective July

1, 2017]

REPRESENTATION

§ 1.455 Representation in international

applications.

(a) Applicants of international applications may

be represented by attorneys or agents registered to

practice before the United States Patent and

Trademark Ofﬁce or by an applicant appointed as

a common representative (PCT Art. 49, Rules 4.8

and 90 and § 11.9). If applicants have not appointed

an attorney or agent or one of the applicants to

represent them, and there is more than one applicant,

the applicant ﬁrst named in the request and who is

entitled to ﬁle in the U.S. Receiving Ofﬁce shall be

considered to be the common representative of all

the applicants. An attorney or agent having the right

to practice before a national ofﬁce with which an

international application is ﬁled and for which the

United States is an International Searching Authority

or International Preliminary Examining Authority

may be appointed to represent the applicants in the

international application before that authority. An

attorney or agent may appoint an associate attorney

or agent who shall also then be of record (PCT Rule

90.1(d)). The appointment of an attorney or agent,

or of a common representative, revokes any earlier

appointment unless otherwise indicated (PCT Rule

90.6(b) and (c)).

(b) Appointment of an agent, attorney or

common representative (PCT Rule 4.8) must be

effected either in the Request form, signed by

applicant, in the Demand form, signed by applicant,

or in a separate power of attorney submitted either

to the United States Receiving Ofﬁce or to the

International Bureau.

should be submitted to the United States Receiving

Ofﬁce until the issuance of the international search

report.

(d) The addressee for correspondence will be

as indicated in section 108 of the Administrative

Instructions.

[43 FR 20458, May 11, 1978; 50 FR 5171, Feb. 6,

1985, effective Mar. 8, 1985; para. (a) amended, 58 FR

4335, Jan. 14, 1993, effective May 1, 1993; para. (b)

revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1,

2004; para. (a) revised, 69 FR 35427, June 24, 2004,

effective July 26, 2004]

TRANSMITTAL OF RECORD COPY

§ 1.461 Procedures for transmittal of record

copy to the International Bureau.

(a) Transmittal of the record copy of the

international application to the International Bureau

shall be made by the United States Receiving Ofﬁce

or as provided by PCT Rule 19.4.

(b) [Reserved]

be transmitted to the International Bureau, a foreign

Designated Ofﬁce, or other foreign authority by the

United States Receiving Ofﬁce or the applicant,

R-184January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.455

unless the applicable requirements of part 5 of this

chapter have been satisﬁed.

[43 FR 20458, May 11, 1978; paras. (a) and (b),

50 FR 9384, Mar. 7, 1985, effective May 8, 1985; para.

(a) revised, 63 FR 29614, June 1, 1998, effective July 1,

1998 (adopted as ﬁnal, 63 FR 66040, Dec. 1, 1998)]

TIMING

§ 1.465 Timing of application processing

based on the priority date.

(a) For the purpose of computing time limits

under the Treaty, the priority date shall be deﬁned

as in PCT Art. 2(xi).

(b) When a claimed priority date is corrected

under PCT Rule 26 bis.1(a), or a priority claim is

added under PCT Rule 26 bis.1(a), withdrawn under

PCT Rule 90 bis.3, or considered not to have been

made under PCT Rule 26 bis.2, the priority date for

the purposes of computing any non-expired time

limits will be the ﬁling date of the earliest remaining

priority claim under PCT Article 8 of the

international application, or if none, the international

ﬁling date.

14(2) or PCT Rule 20.2(a) (i) or (iii) are timely

submitted, and the date of receipt of such corrections

falls later than one year from the claimed priority

date or dates, the Receiving Ofﬁce shall proceed

under PCT Rule 26 bis.2.

[Paras. (b) and (c) revised, 63 FR 29614, June 1,

1998, effective July 1, 1998 (adopted as ﬁnal, 63 FR

66040, Dec. 1, 1998); para. (b) revised, 72 FR 51559,

Sept. 10, 2007, effective Sept. 10, 2007]

§ 1.468 Delays in meeting time limits.

Delays in meeting time limits during international

processing of international applications may only

be excused as provided in PCT Rule 82. For delays

in meeting time limits in a national application, see

§ 1.137.

AMENDMENTS

§ 1.471 Corrections and amendments during

international processing.

(a) Except as otherwise provided in this

paragraph, all corrections submitted to the United

States Receiving Ofﬁce or United States

International Searching Authority must be in

English, in the form of replacement sheets in

compliance with PCT Rules 10 and 11, and

accompanied by a letter that draws attention to the

differences between the replaced sheets and the

replacement sheets. Replacement sheets are not

required for the deletion of lines of text, the

correction of simple typographical errors, and one

addition or change of not more than ﬁve words per

sheet. These changes may be stated in a letter and,

if appropriate, the United States Receiving Ofﬁce

will make the deletion or transfer the correction to

the international application, provided that such

corrections do not adversely affect the clarity and

direct reproducibility of the application (PCT Rule

26.4). Amendments that do not comply with PCT

Rules 10 and 11.1 to 11.13 may not be entered.

(b) Amendments of claims submitted to the

International Bureau shall be as prescribed by PCT

Rule 46.

any declarations under PCT Rule 4.17 should be

submitted to the International Bureau as prescribed

by PCT Rule 26 ter.

[Para. (a) revised, 63 FR 29614, June 1, 1998,

effective July 1, 1998 (adopted as ﬁnal, 63 FR 66040,

Dec. 1, 1998); para. (c) added, 66 FR 16004, Mar. 22,

2001, effective Mar. 1, 2001]

§ 1.472 Changes in person, name, or address

of applicants and inventors.

All requests for a change in person, name or address

of applicants and inventor [should] be sent to the

United States Receiving Ofﬁce until the time of

issuance of the international search report.

Thereafter requests for such changes should be

submitted to the International Bureau.

[43 FR 20458, May 11, 1978; redesignated at 52

FR 20047, May 28, 1987]

January 2018R-185

§ 1.472CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

UNITY OF INVENTION

§ 1.475 Unity of invention before the

International Searching Authority, the

International Preliminary Examining

Authority and during the national stage.

(a) An international and a national stage

application shall relate to one invention only or to

a group of inventions so linked as to form a single

general inventive concept (“requirement of unity of

invention”). Where a group of inventions is claimed

in an application, the requirement of unity of

invention shall be fulﬁlled only when there is a

technical relationship among those inventions

involving one or more of the same or corresponding

special technical features. The expression “special

technical features” shall mean those technical

features that deﬁne a contribution which each of the

claimed inventions, considered as a whole, makes

over the prior art.

(b) An international or a national stage

application containing claims to different categories

of invention will be considered to have unity of

invention if the claims are drawn only to one of the

following combinations of categories:

(1) A product and a process specially

adapted for the manufacture of said product; or

(2) A product and a process of use of said

product; or

(3) A product, a process specially adapted

for the manufacture of the said product, and a use

of the said product; or

(4) A process and an apparatus or means

speciﬁcally designed for carrying out the said

process; or

(5) A product, a process specially adapted

for the manufacture of the said product, and an

apparatus or means speciﬁcally designed for

carrying out the said process.

less than one of the combinations of categories of

invention set forth in paragraph (b) of this section,

unity of invention might not be present.

(d) If multiple products, processes of

manufacture or uses are claimed, the ﬁrst invention

of the category ﬁrst mentioned in the claims of the

application and the ﬁrst recited invention of each

of the other categories related thereto will be

considered as the main invention in the claims, see

PCT Article 17(3)(a) and § 1.476(c).

(e) The determination whether a group of

inventions is so linked as to form a single general

inventive concept shall be made without regard to

whether the inventions are claimed in separate

claims or as alternatives within a single claim.

[Added 52 FR 20047, May 28, 1987, effective July

1, 1987; paras. (a) - (e) amended and para. (f) deleted,

58 FR 4335, Jan. 14, 1993, effective May 1, 1993]

§ 1.476 Determination of unity of invention

before the International Searching Authority.

(a) Before establishing the international search

report, the International Searching Authority will

determine whether the international application

complies with the requirement of unity of invention

as set forth in § 1.475.

(b) If the International Searching Authority

considers that the international application does not

comply with the requirement of unity of invention,

it shall inform the applicant accordingly and invite

the payment of additional fees (note § 1.445 and

PCT Art. 17(3)(a) and PCT Rule 40). The applicant

will be given a time period in accordance with PCT

Rule 40.3 to pay the additional fees due.

invention and where no additional fees are paid, the

international search will be performed on the

invention ﬁrst mentioned (“main invention”) in the

claims.

(d) Lack of unity of invention may be directly

evident before considering the claims in relation to

any prior art, or after taking the prior art into

consideration, as where a document discovered

during the search shows the invention claimed in a

generic or linking claim lacks novelty or is clearly

obvious, leaving two or more claims joined thereby

without a common inventive concept. In such a case

the International Searching Authority may raise the

objection of lack of unity of invention.

[43 FR 20458, May 11, 1978; redesignated and

amended at 52 FR 20047, May 28, 1987; para. (a)

amended, 58 FR 4335, Jan. 14, 1993, effective May 1,

1993]

R-186January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.475

§ 1.477 Protest to lack of unity of invention

before the International Searching Authority.

(a) If the applicant disagrees with the holding

of lack of unity of invention by the International

Searching Authority, additional fees may be paid

under protest, accompanied by a request for refund

and a statement setting forth reasons for

disagreement or why the required additional fees

are considered excessive, or both (PCT Rule

40.2(c)).

(b) Protest under paragraph (a) of this section

will be examined by the Director or the Director’s

designee. In the event that the applicant’s protest is

determined to be justiﬁed, the additional fees or a

portion thereof will be refunded.

protest and the decision thereon accompany the

international search report when forwarded to the

Designated Ofﬁces, may notify the International

Searching Authority to that effect any time prior to

the issuance of the international search report.

Thereafter, such notiﬁcation should be directed to

the International Bureau (PCT Rule 40.2(c)).

[43 FR 20458, May 11, 1978; redesignated and

amended at 52 FR 20047, May 28, 1987; para. (b)

revised, 68 FR 14332, Mar. 25, 2003, effective May 1,

2003]

INTERNATIONAL PRELIMINARY

EXAMINATION

§ 1.480 Demand for international

preliminary examination.

(a) On the ﬁling of a proper Demand in an

application for which the United States International

Preliminary Examining Authority is competent and

for which the fees have been paid, the international

application shall be the subject of an international

preliminary examination. The preliminary

examination fee (§ 1.482(a)(1)) and the handling

fee (§ 1.482(b)) shall be due within the applicable

time limit set forth in PCT Rule 57.3.

(b) The Demand shall be made on a standardized

form (PCT Rule 53). Copies of the printed Demand

forms are available from the United States Patent

and Trademark Ofﬁce. Letters requesting printed

Demand forms should be marked “Mail Stop PCT.”

start of the international preliminary examination

will entitle applicant to a refund of the preliminary

examination fee minus the amount of the transmittal

fee set forth in § 1.445(a)(1).

(d) The ﬁling of a Demand shall constitute the

election of all Contracting States which are

designated and are bound by Chapter II of the Treaty

on the international ﬁling date (PCT Rule 53.7).

(e) Any Demand ﬁled after the expiration of the

applicable time limit set forth in PCT Rule

54 bis.1(a) shall be considered as if it had not been

submitted (PCT Rule 54 bis.1(b)).

[52 FR 20048, May 28, 1987; para. (d), 53 FR

47810, Nov. 28, 1988, effective Jan. 1, 1989; para. (b)

amended, 58 FR 4335, Jan. 14, 1993, effective May 1,

1993; para. (a) revised, 63 FR 29614, June 1, 1998,

effective July 1, 1998 (adopted as ﬁnal, 63 FR 66040,

Dec. 1, 1998); para. (c) removed and para. (d)

redesignated as para. (c), 67 FR 520, Jan. 4, 2002,

effective Apr. 1, 2002; para. (b) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; para. (a) revised,

paras. (d) & (e) added, 68 FR 58991, Oct. 20, 2003,

effective Jan. 1, 2004]

§ 1.481 Payment of international preliminary

examination fees.

(a) The handling and preliminary examination

fees shall be paid within the time period set in PCT

Rule 57.3. The handling fee or preliminary

examination fee payable is the handling fee or

preliminary examination fee in effect on the date of

payment.

(1) If the handling and preliminary

examination fees are not paid within the time period

set in PCT Rule 57.3, applicant will be notiﬁed and

given one month within which to pay the deﬁcient

fees plus a late payment fee equal to the greater of:

(i) Fifty percent of the amount of the

deﬁcient fees, but not exceeding an amount equal

to double the handling fee; or

(ii) An amount equal to the handling fee

(PCT Rule 58 bis.2).

(2) The one-month time limit set in this

paragraph to pay deﬁcient fees may not be extended.

(b) If the payment needed to cover the handling

and preliminary examination fees, pursuant to

paragraph (a) of this section, is not timely made in

January 2018R-187

§ 1.481CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

accordance with PCT Rule 58 bis.1(d), the United

States International Preliminary Examination

Authority will declare the Demand to be considered

as if it had not been submitted.

[63 FR 29614, June 1, 1998, effective July 1, 1998

(adopted as ﬁnal, 63 FR 66040, Dec. 1, 1998); para. (a)

revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1,

2004]

§ 1.482 International preliminary

examination and processing fees.

(a) The following fees and charges for

international preliminary examination are

established by the Director under the authority of

35 U.S.C. 376:

(1) The following preliminary examination

fee is due on ﬁling the Demand:

(i) If an international search fee as set

forth in § 1.445(a)(2) has been paid on the

international application to the United States Patent

and Trademark Ofﬁce as an International Searching

Authority:

(A) For an international preliminary

examination fee paid on or after January 1, 2014:

By a micro entity (§

1.29)...........................................................$150.00

By a small entity (§

1.27(a)).......................................................$300.00

By other than a small or micro

entity...........................................................$600.00

(B) For an international preliminary

examination fee paid before January 1,

2014............................................................$600.00

(ii) If the International Searching

Authority for the international application was an

authority other than the United States Patent and

Trademark Ofﬁce:

(A) For an international preliminary

examination fee paid on or after January 1, 2014:

By a micro entity (§

1.29)...........................................................$190.00

By a small entity (§

1.27(a)).......................................................$380.00

By other than a small or micro

entity...........................................................$760.00

(B) For an international preliminary

examination fee paid before January 1,

2014...........................................................$750.00.

(2) An additional preliminary examination

fee when required, per additional invention:

(i) If the international preliminary

examination fee set forth in paragraph (a)(1) of this

section was paid on or after January 1, 2014:

By a micro entity (§ 1.29)....$150.00

By a small entity (§

1.27(a)).......................................................$300.00

By other than a small or micro

entity...........................................................$600.00

(ii) If the international preliminary

examination fee set forth in paragraph (a)(1) of this

section was paid before January 1, 2014....$600.00

(b) The handling fee is due on ﬁling the Demand

and shall be [as] prescribed in PCT Rule 57.

listing in response to an invitation under PCT Rule

13 ter:

By a micro entity (§ 1.29).................$75.00

By a small entity (§ 1.27(a)).............150.00

By other than a small or micro

entity.............................................................300.00

[52 FR 20048, May 28, 1987; para. (a), 54 FR

6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a),

56 FR 65142, Dec. 13, 1991, effective Dec. 27, 1991;

paras. (a)(1) and (a)(2)(ii), 57 FR 38190, Aug. 21, 1992,

effective Oct. 1, 1992; paras. (a)(2)(i) and (b) amended,

58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras.

(a)(1) and (a)(2)(ii), 59 FR 43736, Aug. 25, 1994,

effective Oct. 1, 1994; paras. (a)(1)(i), (a)(1)(ii), &

(a)(2)(ii) amended, 60 FR 41018, Aug. 11, 1995, effective

Oct. 1, 1995; paras. (a)(1)(i), (a)(1)(ii), and (a)(2)(ii)

amended, 61 FR 39585, July 30, 1996, effective Oct. 1,

1996; paras. (a)(1)(i), (a)(1)(ii), and (a)(2)(ii) amended,

62 FR 40450, July 29, 1997, effective Oct. 1, 1997; para.

(a) revised, 68 FR 14332, Mar. 25, 2003, effective May

1, 2003; revised, 68 FR 58991, Oct. 20, 2003, effective

Jan. 1, 2004; revised, 78 FR 4212, Jan. 18, 2013, effective

Mar. 19, 2013; revised 78 FR 17102, Mar. 20, 2013,

effective Mar. 20, 2013; section heading revised and para.

16, 2018]

R-188January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.482

§ 1.484 Conduct of international preliminary

examination.

(a) An international preliminary examination

will be conducted to formulate a non-binding

opinion as to whether the claimed invention has

novelty, involves an inventive step (is non-obvious)

and is industrially applicable.

(b) International preliminary examination will

begin in accordance with PCT Rule 69.1.

will be conducted on inventions not previously

searched by an International Searching Authority.

(d) The International Preliminary Examining

Authority will establish a written opinion if any

defect exists or if the claimed invention lacks

novelty, inventive step or industrial applicability

and will set a non-extendable time limit in the

written opinion for the applicant to reply.

(e) The written opinion established by the

International Searching Authority under PCT Rule

43 bis.1 shall be considered to be a written opinion

of the United States International Preliminary

Examining Authority for the purposes of paragraph

(d) of this section.

(f) The International Preliminary Examining

Authority may establish further written opinions

under paragraph (d) of this section.

(g) If no written opinion under paragraph (d) of

this section is necessary, or if no further written

opinion under paragraph (f) of this section is to be

established, or after any written opinion and the

reply thereto or the expiration of the time limit for

reply to such written opinion, an international

preliminary examination report will be established

by the International Preliminary Examining

Authority. One copy will be submitted to the

International Bureau and one copy will be submitted

to the applicant.

(h) An applicant will be permitted a personal or

telephone interview with the examiner, which may

be requested after the ﬁling of a Demand, and must

be conducted during the period between the

establishment of the written opinion and the

establishment of the international preliminary

examination report. Additional interviews may be

conducted where the examiner determines that such

additional interviews may be helpful to advancing

the international preliminary examination procedure.

A summary of any such personal or telephone

interview must be ﬁled by the applicant or, if not

ﬁled by applicant be made of record in the ﬁle by

the examiner.

(i) If the application whose priority is claimed

in the international application is in a language other

than English, the United States International

Preliminary Examining Authority may, where the

validity of the priority claim is relevant for the

formulation of the opinion referred to in Article

33(1), invite the applicant to furnish an English

translation of the priority document within two

months from the date of the invitation. If the

translation is not furnished within that time limit,

the international preliminary report may be

established as if the priority had not been claimed.

[52 FR 20049, May 28, 1987; para. (b) amended,

58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras.

(d)-(f) revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; para. (b) revised, 63 FR 29614, June 1,

1998, effective July 1, 1998 (adopted as ﬁnal, 63 FR

66040, Dec. 1, 1998); para. (g) added, 66 FR 16004, Mar.

22, 2001, effective Mar. 1, 2001; para. (b) & (e)-(g)

revised, paras. (h) & (i) added, 68 FR 58991, Oct. 20,

2003, effective Jan. 1, 2004]

§ 1.485 Amendments by applicant during

international preliminary examination.

The applicant may make amendments at the time

of ﬁling the Demand. The applicant may also make

amendments within the time limit set by the

International Preliminary Examining Authority for

reply to any notiﬁcation under § 1.484(b) or to any

written opinion. Any such amendments must be

made in accordance with PCT Rule 66.8.

[Added 52 FR 20049, May 28, 1987; amended, 58

FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (a)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; para. (a) revised, 63 FR 29614, June 1, 1998,

effective July 1, 1998 (adopted as ﬁnal, 63 FR 66040,

Dec. 1, 1998); amended, 74 FR 31372, July 1, 2009,

effective July 1, 2009]

January 2018R-189

§ 1.485CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 1.488 Determination of unity of invention

before the International Preliminary

Examining Authority.

(a) Before establishing any written opinion or

the international preliminary examination report,

the International Preliminary Examining Authority

will determine whether the international application

complies with the requirement of unity of invention

as set forth in § 1.475.

(b) If the International Preliminary Examining

Authority considers that the international application

does not comply with the requirement of unity of

invention, it may:

(1) Issue a written opinion and/or an

international preliminary examination report, in

respect of the entire international application and

indicate that unity of invention is lacking and specify

the reasons therefor without extending an invitation

to restrict or pay additional fees. No international

preliminary examination will be conducted on

inventions not previously searched by an

International Searching Authority.

(2) Invite the applicant to restrict the claims

or pay additional fees, pointing out the categories

of invention found, within a set time limit which

will not be extended. No international preliminary

examination will be conducted on inventions not

previously searched by an International Searching

Authority, or

(3) If applicant fails to restrict the claims or

pay additional fees within the time limit set for

reply, the International Preliminary Examining

Authority will issue a written opinion and/or

establish an international preliminary examination

report on the main invention and shall indicate the

relevant facts in the said report. In case of any doubt

as to which invention is the main invention, the

invention ﬁrst mentioned in the claims and

previously searched by an International Searching

Authority shall be considered the main invention.

evident before considering the claims in relation to

any prior art, or after taking the prior art into

consideration, as where a document discovered

during the search shows the invention claimed in a

generic or linking claim lacks novelty or is clearly

obvious, leaving two or more claims joined thereby

without a common inventive concept. In such a case

the International Preliminary Examining Authority

may raise the objection of lack of unity of invention.

[52 FR 20049, May 28, 1987; para. (a) amended,

58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para.

(b)(3) revised, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997]

§ 1.489 Protest to lack of unity of invention

before the International Preliminary

Examining Authority.

(a) If the applicant disagrees with the holding

of lack of unity of invention by the International

Preliminary Examining Authority, additional fees

may be paid under protest, accompanied by a request

for refund and a statement setting forth reasons for

disagreement or why the required additional fees

are considered excessive, or both.

(b) Protest under paragraph (a) of this section

will be examined by the Director or the Director’s

designee. In the event that the applicant’s protest is

determined to be justiﬁed, the additional fees or a

portion thereof will be refunded.

protest and the decision thereon accompany the

international preliminary examination report when

forwarded to the Elected Ofﬁces, may notify the

International Preliminary Examining Authority to

that effect any time prior to the issuance of the

international preliminary examination report.

Thereafter, such notiﬁcation should be directed to

the International Bureau.

[Added 52 FR 20050, May 28, 1987, effective July

1, 1987; para. (b) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

NATIONAL STAGE

§ 1.491 National stage commencement, entry,

and fulﬁllment.

[Editor Note: Certain paragraphs below are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after September 16, 2012*]

(a) Subject to 35 U.S.C. 371(f), the national

stage shall commence with the expiration of the

applicable time limit under PCT Article 22(1) or

(2), or under PCT Article 39(1)(a).

R-190January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.488

(b) An international application enters the

national stage when the applicant has ﬁled the

documents and fees required by 35 U.S.C. 371(c)(1)

and (c)(2) within the period set in § 1.495.

requirements of 35 U.S.C. 371 when the national

stage has commenced under 35 U.S.C. 371(b) or (f)

and all applicable requirements of 35 U.S.C. 371

have been satisﬁed.

[Added, 52 FR 20050, May 28, 1987; revised, 66

FR 45775, Aug. 30, 2001; revised, 67 FR 520, Jan. 4,

2002, effective Apr. 1, 2002; heading and para. (b)

revised and para. (c) added, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.491 (pre-AIA) for the rule otherwise in effect.]

§ 1.491 (pre-AIA) National stage

commencement and entry.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) Subject to 35 U.S.C. 371(f), the national

stage shall commence with the expiration of the

applicable time limit under PCT Article 22(1) or

(2), or under PCT Article 39(1)(a).

(b) An international application enters the

national stage when the applicant has ﬁled the

documents and fees required by 35 U.S.C. 371(c)

within the period set in § 1.495.

[Added, 52 FR 20050, May 28, 1987; revised, 66

FR 45775, Aug. 30, 2001; revised, 67 FR 520, Jan. 4,

2002, effective Apr. 1, 2002]

[*See § 1.491 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.492 National stage fees.

The following fees and charges are established for

international applications entering the national stage

under 35 U.S.C. 371:

(a) The basic national fee for an international

application entering the national stage under 35

U.S.C. 371:

By a micro entity (§ 1.29).................$75.00

By a small entity (§ 1.27(a)).............150.00

By other than a small or micro

entity.............................................................300.00

(b) Search fee for an international application

entering the national stage under 35 U.S.C. 371:

(1) If an international preliminary

examination report on the international application

prepared by the United States International

Preliminary Examining Authority or a written

opinion on the international application prepared by

the United States International Searching Authority

states that the criteria of novelty, inventive step

(non-obviousness), and industrial applicability, as

deﬁned in PCT Article 33(1) to (4) have been

satisﬁed for all of the claims presented in the

application entering the national stage:

By a micro entity (§ 1.29)..............$0.00

By a small entity (§ 1.27(a))............0.00

By other than a small or micro

entity.................................................................0.00

(2) If the search fee as set forth in §

1.445(a)(2) has been paid on the international

application to the United States Patent and

Trademark Ofﬁce as an International Searching

Authority:

By a micro entity (§ 1.29)............$35.00

By a small entity (§ 1.27(a))..........70.00

By other than a small or micro

entity.............................................................140.00

(3) If an international search report on the

international application has been prepared by an

International Searching Authority other than the

United States International Searching Authority and

is provided, or has been previously communicated

by the International Bureau, to the Ofﬁce:

By a micro entity (§ 1.29)..........$130.00

By a small entity (§ 1.27(a))........260.00

By other than a small entity.........520.00

(4) In all situations not provided for in

paragraph (b)(1), (2), or (3) of this section:

By a micro entity (§ 1.29)..........$165.00

By a small entity (§ 1.27(a))........330.00

January 2018R-191

§ 1.492CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

By other than a small or micro

entity.............................................................660.00

application entering the national stage under 35

U.S.C. 371:

(1) If an international preliminary

examination report on the international application

prepared by the United States International

Preliminary Examining Authority or a written

opinion on the international application prepared by

the United States International Searching Authority

states that the criteria of novelty, inventive step

(non-obviousness), and industrial applicability, as

deﬁned in PCT Article 33(1) to (4) have been

satisﬁed for all of the claims presented in the

application entering the national stage:

By a micro entity (§ 1.29)..............$0.00

By a small entity (§ 1.27(a))............0.00

By other than a small or micro

entity.................................................................0.00

(2) In all situations not provided for in

paragraph (c)(1) of this section:

By a micro entity (§ 1.29)..........$190.00

By a small entity (§ 1.27(a))........380.00

By other than a small or micro

entity.............................................................760.00

(d) In addition to the basic national fee, for ﬁling

or on later presentation at any other time of each

claim in independent form in excess of 3:

By a micro entity (§ 1.29)...............$115.00

By a small entity (§ 1.27(a)).............230.00

By other than a small or micro

entity.............................................................460.00

(e) In addition to the basic national fee, for ﬁling

or on later presentation at any other time of each

claim (whether dependent or independent) in excess

of 20 (note that § 1.75(c) indicates how multiple

dependent claims are considered for fee calculation

purposes):

By a micro entity (§ 1.29).................$25.00

By a small entity (§ 1.27(a))...............50.00

By other than a small or micro

entity.............................................................100.00

(f) In addition to the basic national fee, if the

application contains, or is amended to contain, a

multiple dependent claim, per application:

By a micro entity (§ 1.29)...............$205.00

By a small entity (§ 1.27(a)).............410.00

By other than a small or micro

entity.............................................................820.00

(g) If the excess claims fees required by

paragraphs (d) and (e) of this section and multiple

dependent claim fee required by paragraph (f) of

this section are not paid with the basic national fee

or on later presentation of the claims for which

excess claims or multiple dependent claim fees are

due, the fees required by paragraphs (d), (e), and (f)

of this section must be paid or the claims canceled

by amendment prior to the expiration of the time

period set for reply by the Ofﬁce in any notice of

fee deﬁciency in order to avoid abandonment.

(h) Surcharge for ﬁling any of the search fee,

the examination fee, or the oath or declaration after

the date of the commencement of the national stage

(§ 1.491(a) ) pursuant to § 1.495(c):

By a micro entity (§ 1.29).................$35.00

By a small entity (§ 1.27(a))...............70.00

By other than a small entity..............140.00

(i) For ﬁling an English translation of an

international application or any annexes to an

international preliminary examination report later

than thirty months after the priority date (§ 1.495(c)

and (e)):

By a micro entity (§ 1.29).................$35.00

By a small entity (§ 1.27(a))...............70.00

By other than a small or micro

entity.............................................................140.00

(j) Application size fee for any international

application, the speciﬁcation and drawings of which

exceed 100 sheets of paper, for each additional 50

sheets or fraction thereof:

By a micro entity (§ 1.29)...............$100.00

By a small entity (§ 1.27(a)).............200.00

By other than a small or micro

entity.............................................................400.00

[52 FR 20050, May 28, 1987, effective July 1,

1987; paras. (a)(1) - (3), (b), (d)- (f), 54 FR 6893, Feb.

15, 1989, effective Apr. 17, 1989; para. (a)(5) added, 56

R-192January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.492

FR 65142, Dec. 13, 1991, effective Dec. 16, 1991;

revised, 56 FR 65142, Dec. 13, 1991, effective Dec. 16,

1991; paras. (a)(1)-(a)(3), (a)(5) and (b)-(d), 57 FR 38190,

Aug. 21, 1992, effective Oct. 1, 1992; para. (e) amended,

58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras.

(a), (b) and (d), 59 FR 43736, Aug. 25, 1994, effective

Oct. 1, 1994; paras. (a), (b), & (d) amended, 60 FR 41018,

Aug. 11, 1995, effective, Oct. 1, 1995; paras. (a), (b), &

(d) amended, 61 FR 39585, July 30, 1996, effective Oct.

1, 1996; paras. (a), (b), & (d) amended, 62 FR 40450,

July 29, 1997, effective Oct. 1, 1997; para. (g) added, 62

FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras.

(a)-(d) revised, 63 FR 67578, Dec. 8, 1998, effective Nov.

10, 1998; para. (a)(2) revised, 64 FR 67774, Dec. 3, 1999,

effective Dec. 29, 1999; paras. (a), (b) and (d) revised,

65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000;

paras. (a)-(e) revised, 65 FR 78958, Dec. 18, 2000; paras.

(a)(1)-(a)(3), (a)(5), (b) and (d) revised, 66 FR 39447,

July 31, 2001, effective Oct. 1, 2001; paras. (e) and (f)

revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002;

paras. (a)(1) through (a)(3), and (a)(5) revised, 67 FR

70847, Nov. 27, 2002, effective Jan. 1, 2003; paras. (a)(1)

through (a)(3), (a)(5), (b), and (d) revised, 68 FR 41532,

July 14, 2003, effective Oct. 1, 2003; paras. (a)(1) through

(a)(3), (a)(5), (b) and (d) revised, 69 F R 52604, Aug. 27,

2004, effective Oct. 1, 2004; revised, 70 FR 3880, Jan.

27, 2005, effective Dec. 8, 2004; paras. (b) and (c)

revised, 70 FR 5053, Feb. 1, 2005, effective Feb. 1, 2005;

paras. (h) and (j) revised, 70 FR 30360, May 26, 2005,

effective July 1, 2005; paras. (b) and (c) revised, 70 FR

35375, June 20, 2005, effective July 1, 2005; paras. (a),

(b)(2) through (b)(4), (c)(2), (d) through (f), and (j)

revised, 72 FR 46899, Aug. 22, 2007, effective Sept. 30,

2007; paras. (b)(2) through (b)(4) corrected, 72 FR 55055,

Sept. 28, 2007, effective Sept. 30, 2007; paras. (a), (b)(3),

(b)(4), (c)(2), (d) through (f) and (j) revised, 73 FR 47534,

Aug. 14, 2008, effective Oct. 2, 2008; para. (h) revised,

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012;

paras. (a), (b)(3), (b)(4), (c)(2), (d)-(f) and (j) revised, 77

FR 54360, Sept. 5, 2012, effective Oct. 5, 2012; revised,

78 FR 4212, Jan. 18, 2013, effective Mar. 19, 2013; paras.

(a), (b)(2)-(4), (c)(2), and (d)-(f) revised, 82 FR 52780,

Nov. 14, 2017, effective Jan. 16, 2018]

§ 1.494 [Reserved]

[Added 52 FR 20050, May 28, 1987; paras. (a) -

(d) and (g) amended and para. (h) deleted, 58 FR 4335,

Jan. 14, 1993, effective May 1, 1993; para. (c) revised,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para

1, 1998 (adopted as ﬁnal, 63 FR 66040, Dec. 1, 1998);

para (f) revised, 65 FR 57024, Sept. 20, 2000, effective

Nov. 29, 2000; para. (c)(2) revised, 66 FR 16004, Mar.

22, 2001, effective Mar. 1, 2000; para. (c)(2) corrected,

66 FR 28053, May 22, 2001, effective Mar. 22, 2001;

removed and reserved, 67 FR 520, Jan. 4, 2002, effective

Apr. 1, 2002]

§ 1.495 Entering the national stage in the

United States of America.

[Editor Note: Paragraphs (a), (c), and (h) below

are applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after September 16, 2012*]

(a) The applicant in an international application

must fulﬁll the requirements of 35 U.S.C. 371 within

the time periods set forth in paragraphs (b) and (c)

of this section in order to prevent the abandonment

of the international application as to the United

States of America. The thirty-month time period set

forth in paragraphs (b), (c), (d), (e) and (h) of this

section may not be extended.

(b) To avoid abandonment of the application,

the applicant shall furnish to the United States Patent

and Trademark Ofﬁce not later than the expiration

of thirty months from the priority date:

(1) A copy of the international application,

unless it has been previously communicated by the

International Bureau or unless it was originally ﬁled

in the United States Patent and Trademark Ofﬁce;

and

(2) The basic national fee (see § 1.492(a)).

(c)(1) If applicant complies with paragraph

(b) of this section before expiration of thirty months

from the priority date, the Ofﬁce will notify the

applicant if he or she has omitted any of:

(i) A translation of the international

application, as ﬁled, into the English language, if it

was originally ﬁled in another language and if any

English language translation of the publication of

the international application previously submitted

under 35 U.S.C. 154(d) (§ 1.417) is not also a

translation of the international application as ﬁled

(35 U.S.C. 371(c)(2) );

(ii) The inventor’s oath or declaration

(35 U.S.C. 371(c)(4) and § 1.497 ), if a declaration

of inventorship in compliance with § 1.63 has not

been previously submitted in the international

application under PCT Rule 4.17(iv) within the time

limits provided for in PCT Rule 26 ter.1;

(iii) The search fee set forth in §

1.492(b);

January 2018R-193

§ 1.495CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(iv) The examination fee set forth in §

1.492(c); and

(v) Any application size fee required by

§ 1.492(j);

(2) A notice under paragraph (c)(1) of this

section will set a time period within which applicant

must provide any omitted translation, search fee set

forth in § 1.492(b), examination fee set forth in §

1.492(c), and any application size fee required by

§ 1.492(j) in order to avoid abandonment of the

application.

(3) The inventor’s oath or declaration must

also be ﬁled within the period speciﬁed in paragraph

(c)(2) of this section, except that the ﬁling of the

inventor’s oath or declaration may be postponed

until the application is otherwise in condition for

allowance under the conditions speciﬁed in

paragraphs (c)(3)(i) through (c)(3)(iii) of this

section.

(i) The application contains an

application data sheet in accordance with § 1.76

ﬁled prior to the expiration of the time period set in

any notice under paragraph (c)(1) identifying:

(A) Each inventor by his or her legal

name;

(B) A mailing address where the

inventor customarily receives mail, and residence,

if an inventor lives at a location which is different

from where the inventor customarily receives mail,

for each inventor.

(ii) The applicant must ﬁle each required

oath or declaration in compliance with § 1.63, or

substitute statement in compliance with § 1.64, no

later than the date on which the issue fee for the

patent is paid. If the applicant is notiﬁed in a notice

of allowability that an oath or declaration in

compliance with § 1.63, or substitute statement in

compliance with § 1.64, executed by or with respect

to each named inventor has not been ﬁled, the

applicant must ﬁle each required oath or declaration

in compliance with § 1.63, or substitute statement

in compliance with § 1.64, no later than the date on

which the issue fee is paid to avoid abandonment.

This time period is not extendable under § 1.136

(see § 1.136(c)). The Ofﬁce may dispense with the

notice provided for in paragraph (c)(1) of this

section if each required oath or declaration in

compliance with § 1.63, or substitute statement in

compliance with § 1.64, has been ﬁled before the

application is in condition for allowance.

(iii) An international application in which

the basic national fee under 35 U.S.C. 41(a)(1)(F)

has been paid and for which an application data

sheet in accordance with § 1.76 has been ﬁled may

be treated as complying with 35 U.S.C. 371 for

purposes of eighteen-month publication under 35

U.S.C. 122(b) and § 1.211 et seq.

(4) The payment of the processing fee set

forth in § 1.492(i) is required for acceptance of an

English translation later than the expiration of thirty

months after the priority date. The payment of the

surcharge set forth in § 1.492(h) is required for

acceptance of any of the search fee, the examination

fee, or the inventor’s oath or declaration after the

date of the commencement of the national stage (§

1.491(a)).

(5) A “Sequence Listing” need not be

translated if the “Sequence Listing” complies with

PCT Rule 12.1(d) and the description complies with

PCT Rule 5.2(b).

(d) A copy of any amendments to the claims

made under PCT Article 19, and a translation of

those amendments into English, if they were made

in another language, must be furnished not later than

the expiration of thirty months from the priority

date. Amendments under PCT Article 19 which are

not received by the expiration of thirty months from

the priority date will be considered to be canceled.

(e) A translation into English of any annexes to

an international preliminary examination report (if

applicable), if the annexes were made in another

language, must be furnished not later than the

expiration of thirty months from the priority date.

Translations of the annexes which are not received

by the expiration of thirty months from the priority

date may be submitted within any period set

pursuant to paragraph (c) of this section

accompanied by the processing fee set forth in §

1.492(f). Annexes for which translations are not

timely received will be considered canceled.

(f) Veriﬁcation of the translation of the

international application or any other document

pertaining to an international application may be

required where it is considered necessary, if the

international application or other document was

ﬁled in a language other than English.

R-194January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.495

(g) The documents and fees submitted under

paragraphs (b) and (c) of this section must be

identiﬁed as a submission to enter the national stage

under 35 U.S.C. 371. If the documents and fees

contain conﬂicting indications as between an

application under 35 U.S.C. 111 and a submission

to enter the national stage under 35 U.S.C. 371, the

documents and fees will be treated as a submission

to enter the national stage under 35 U.S.C. 371.

(h) An international application becomes

abandoned as to the United States thirty months

from the priority date if the requirements of

paragraph (b) of this section have not been complied

with within thirty months from the priority date.

[Added 52 FR 20051, May 28, 1987, effective July

1, 1987; paras. (a) -(e) & (h) amended and para. (i)

deleted, 58 FR 4335, Jan. 14, 1993, effective May 1,

1993; para. (c) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; para (c) revised, 63 FR 29614,

June 1, 1998, effective July 1, 1998 (adopted as ﬁnal, 63

FR 66040, Dec. 1, 1998), para. (g) revised, 65 FR 57024,

Sept. 20, 2000, effective Nov. 29, 2000; para. (c)(2)

revised, 66 FR 16004, Mar. 22, 2001, effective Mar. 1,

2001 para. (c)(2) corrected, 66 FR 28053, May 22, 2001,

effective Mar. 22, 2001; heading and paras. (a)-(e) and

(h) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1,

2002; paras. (c) & (g) revised, 68 FR 70996, Dec. 22,

2003, effective Jan. 21, 2004; para. (c) revised, 70 FR

3880, Jan. 27, 2005, effective Dec. 8, 2004; paras.

(c)(1)(i) and (c)(3) revised, 70 FR 30360, May 26, 2005,

effective July 1, 2005; para. (g) revised, 72 FR 46716,

Aug. 21, 2007 (implementation enjoined and never

became effective); para. (g) revised, 74 FR 52686, Oct.

14, 2009, effective Oct. 14, 2009 (to remove changes

made by the ﬁnal rules in 72 FR 46716 from the CFR);

paras. (a), (c), (g), and (h) revised, 77 FR 48776, Aug.

14, 2012, effective Sept. 16, 2012; para. (c)(3)(ii) revised,

78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013]

[*The changes to paras. (a), (c), and (h) effective

Sept. 16, 2012 are applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after Sept. 16,

2012. See § 1.495 (pre-AIA) for paras. (a), (c), and (h)

otherwise in effect.]

§ 1.495 (pre-AIA) Entering the national

stage in the United States of America.

[Editor Note: Paragraphs (a), (c), and (h) below

are not applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]

(a) The applicant in an international application

must fulﬁll the requirements of 35 U.S.C. 371 within

the time periods set forth in paragraphs (b) and (c)

of this section in order to prevent the abandonment

of the international application as to the United

States of America. The thirty-month time period set

forth in paragraphs (b), (c), (d), (e) and (h) of this

section may not be extended. International

applications for which those requirements are timely

fulﬁlled will enter the national stage and obtain an

examination as to the patentability of the invention

in the United States of America.

* * * * *

(c)(1) If applicant complies with paragraph

(b) of this section before expiration of thirty months

from the priority date, the Ofﬁce will notify the

applicant if he or she has omitted any of:

(i) A translation of the international

application, as ﬁled, into the English language, if it

was originally ﬁled in another language and if any

English language translation of the publication of

the international application previously submitted

under 35 U.S.C. 154(d) (§ 1.417) is not also a

translation of the international application as ﬁled

(35 U.S.C. 371(c)(2));

(ii) The oath or declaration of the

inventor (35 U.S.C. 371(c)(4) and § 1.497), if a

declaration of inventorship in compliance with §

1.497 has not been previously submitted in the

international application under PCT Rule 4.17(iv)

within the time limits provided for in PCT Rule 26

ter.1;

(iii) The search fee set forth in §

1.492(b);

(iv) The examination fee set forth in §

1.492(c); and

(v) Any application size fee required by

§ 1.492(j);

(2) A notice under paragraph (c)(1) of this

section will set a time period within which applicant

must provide any omitted translation, oath or

declaration of the inventor, search fee set forth in §

1.492(b), examination fee set forth in § 1.492(c),

and any application size fee required by § 1.492(j)

in order to avoid abandonment of the application.

(3) The payment of the processing fee set

forth in § 1.492(i) is required for acceptance of an

English translation later than the expiration of thirty

months after the priority date. The payment of the

surcharge set forth in § 1.492(h) is required for

January 2018R-195

§ 1.495

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

acceptance of any of the search fee, the examination

fee, or the oath or declaration of the inventor after

the date of the commencement of the national stage

(§ 1.491(a)).

(4) A “Sequence Listing” need not be

translated if the “Sequence Listing” complies with

PCT Rule 12.1(d) and the description complies with

PCT Rule 5.2(b).

* * * * *

(h) An international application becomes

abandoned as to the United States thirty months

from the priority date if the requirements of

paragraph (b) of this section have not been complied

with within thirty months from the priority date. If

the requirements of paragraph (b) of this section are

complied with within thirty months from the priority

date but either of any required translation of the

international application as ﬁled or the oath or

declaration are not timely ﬁled, an international

application will become abandoned as to the United

States upon expiration of the time period set

pursuant to paragraph (c) of this section.

[*See § 1.495 for more information and for the

current rule, including the portions of the rule not

reproduced above and applicable irrespective of

application ﬁling date and paras. (a), (c), and (h)

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 1.496 Examination of international

applications in the national stage.

National stage applications having paid therein the

search fee as set forth in § 1.492(b)(1) and

examination fee as set forth in § 1.492(c)(1) may

be amended subsequent to the date of

commencement of national stage processing only

to the extent necessary to eliminate objections as to

form or to cancel rejected claims. Such national

stage applications will be advanced out of turn for

examination.

[Added 52 FR 20051, May 28, 1987, effective July

1, 1987; para. (b) revised, 70 FR 5053, Feb. 1, 2005,

effective Feb. 1, 2005; para. (b) revised, 70 FR 35375,

June 20, 2005, effective July 1, 2005; revised, 77 FR

48776, Aug. 14, 2012, effective Sept. 16, 2012]

§ 1.497 Inventor’s oath or declaration under

35 U.S.C. 371(c)(4).

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) When an applicant of an international

application desires to enter the national stage under

35 U.S.C. 371 pursuant to § 1.495, and a declaration

in compliance with § 1.63 has not been previously

submitted in the international application under PCT

Rule 4.17(iv) within the time limits provided for in

PCT Rule 26 ter.1, the applicant must ﬁle the

inventor’s oath or declaration. The inventor, or each

individual who is a joint inventor of a claimed

invention, in an application for patent must execute

an oath or declaration in accordance with the

conditions and requirements of § 1.63, except as

provided for in § 1.64.

(b) An oath or declaration under § 1.63 will be

accepted as complying with 35 U.S.C. 371(c)(4) if

it complies with the requirements of §§ 1.63(a), (c)

and (g). A substitute statement under § 1.64 will be

accepted as complying with 35 U.S.C. 371(c)(4) if

it complies with the requirements of §§ 1.64(b)(1),

substitute statement. If a newly executed inventor’s

oath or declaration under § 1.63 or substitute

statement under § 1.64 is not required pursuant to

§ 1.63(d), submission of the copy of the previously

executed oath, declaration, or substitute statement

under § 1.63(d)(1) is required to comply with 35

U.S.C. 371(c)(4).

substitute statement under § 1.64, meeting the

requirements of § 1.497(b) does not also meet the

requirements of § 1.63 or § 1.64, an oath,

declaration, substitute statement, or application data

sheet in accordance with § 1.76 to comply with §

1.63 or § 1.64 will be required.

[Added 52 FR 20052, May 28, 1987, effective July

1, 1987; paras. (a) and (b) revised and para. (c) added,

61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;

para. (b)(2) revised and paras. (d) and (e) added, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a),

(c), and (d) revised and paras. (f) and (g) added, 66 FR

16004, Mar. 22, 2001, effective Mar. 1, 2001; para. (a)(1)

corrected, 66 FR 28053, May 22, 2001, effective Mar.

22, 2001; paras. (a), (c), (d), and (f) revised, 67 FR 520,

Jan. 4, 2002, effective Apr. 1, 2002; para. (c) corrected,

R-196January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.496

67 FR 6075, Feb. 8, 2002; para. (f)(1), revised 72 FR

51559, Sept. 10, 2007, effective Sept. 10, 2007; revised,

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are

applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

1.497 (pre-AIA) for the rule otherwise in effect.]

§ 1.497 (pre-AIA) Oath or declaration under

35 U.S.C. 371(c)(4).

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) When an applicant of an international

application desires to enter the national stage under

35 U.S.C. 371 pursuant to § 1.495, and a declaration

in compliance with this section has not been

previously submitted in the international application

under PCT Rule 4.17(iv) within the time limits

provided for in PCT Rule 26 ter.1, he or she must

ﬁle an oath or declaration that:

(1) Is executed in accordance with either §§

1.66 or 1.68;

(2) Identiﬁes the speciﬁcation to which it is

directed;

(3) Identiﬁes each inventor and the country

of citizenship of each inventor; and

(4) States that the person making the oath or

declaration believes the named inventor or inventors

to be the original and ﬁrst inventor or inventors of

the subject matter which is claimed and for which

a patent is sought.

(b)(1) The oath or declaration must be made

by all of the actual inventors except as provided for

in§§ 1.42, 1.43 or 1.47.

(2) If the person making the oath or

declaration or any supplemental oath or declaration

is not the inventor (§§ 1.42, 1.43, or § 1.47), the

oath or declaration shall state the relationship of the

person to the inventor, and, upon information and

belief, the facts which the inventor would have been

required to state. If the person signing the oath or

declaration is the legal representative of a deceased

inventor, the oath or declaration shall also state that

the person is a legal representative and the

citizenship, residence and mailing address of the

legal representative.

the oath or declaration meets the requirements of

paragraphs (a) and (b) of this section, the oath or

declaration will be accepted as complying with 35

U.S.C. 371(c)(4) and § 1.495(c). However, if the

oath or declaration does not also meet the

requirements of § 1.63, a supplemental oath or

declaration in compliance with § 1.63 or an

application data sheet will be required in accordance

with § 1.67.

(d) If the oath or declaration ﬁled pursuant to

35 U.S.C. 371(c)(4) and this section names an

inventive entity different from the inventive entity

set forth in the international application, or if a

change to the inventive entity has been effected

under PCT Rule 92 bis subsequent to the execution

of any oath or declaration which was ﬁled in the

application under PCT Rule 4.17(iv) or this section

and the inventive entity thus changed is different

from the inventive entity identiﬁed in any such oath

or declaration, applicant must submit:

(1) A statement from each person being

added as an inventor and from each person being

deleted as an inventor that any error in inventorship

in the international application occurred without

deceptive intention on his or her part;

(2) The processing fee set forth in § 1.17(i);

and

(3) If an assignment has been executed by

any of the original named inventors, the written

consent of the assignee (see § 3.73(b) of this

chapter); and

(4) Any new oath or declaration required by

paragraph (f) of this section.

(e) The Ofﬁce may require such other

information as may be deemed appropriate under

the particular circumstances surrounding the

correction of inventorship.

(f) A new oath or declaration in accordance with

this section must be ﬁled to satisfy 35 U.S.C.

371(c)(4) if the declaration was ﬁled under PCT

Rule 4.17(iv), and:

(1) There was a change in the international

ﬁling date pursuant to PCT Rule 20.5(c) after the

declaration was executed; or

(2) A change in the inventive entity was

effected under PCT Rule 92 bis after the declaration

was executed and no declaration which sets forth

January 2018R-197

§ 1.497

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

and is executed by the inventive entity as so changed

has been ﬁled in the application.

(g) If a priority claim has been corrected or

added pursuant to PCT Rule 26 bis during the

international stage after the declaration of

inventorship was executed in the international

application under PCT Rule 4.17(iv), applicant will

be required to submit either a new oath or

declaration or an application data sheet as set forth

in § 1.76 correctly identifying the application upon

which priority is claimed.

[Added 52 FR 20052, May 28, 1987, effective July

1, 1987; paras. (a) and (b) revised and para. (c) added,

61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;

para. (b)(2) revised and paras. (d) and (e) added, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a),

(c), and (d) revised and paras. (f) and (g) added, 66 FR

16004, Mar. 22, 2001, effective Mar. 1, 2001; para. (a)(1)

corrected, 66 FR 28053, May 22, 2001, effective Mar.

22, 2001; paras. (a), (c), (d), and (f) revised, 67 FR 520,

Jan. 4, 2002, effective Apr. 1, 2002; para. (c) corrected,

67 FR 6075, Feb. 8, 2002; para. (f)(1), revised 72 FR

51559, Sept. 10, 2007, effective Sept. 10, 2007]

[*See § 1.497 for more information and for the

rule applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 1.499 Unity of invention during the

national stage.

If the examiner ﬁnds that a national stage application

lacks unity of invention under § 1.475, the examiner

may in an Ofﬁce action require the applicant in the

response to that action to elect the invention to

which the claims shall be restricted. Such

requirement may be made before any action on the

merits but may be made at any time before the ﬁnal

action at the discretion of the examiner. Review of

any such requirement is provided under §§ 1.143

and 1.144.

[Added 52 FR 20052, May 28, 1987, effective July

1, 1987; amended, 58 FR 4335, Jan. 14, 1993, effective

May 1, 1993]

Subpart D — Ex Parte Reexamination of

Patents

CITATION OF PRIOR ART AND

WRITTEN STATEMENTS

§ 1.501 Citation of prior art and written

statements in patent ﬁles.

(a) Information content of submission: At any

time during the period of enforceability of a patent,

any person may ﬁle a written submission with the

Ofﬁce under this section, which is directed to the

following information:

(1) Prior art consisting of patents or printed

publications which the person making the

submission believes to have a bearing on the

patentability of any claim of the patent; or

(2) Statements of the patent owner ﬁled by

the patent owner in a proceeding before a Federal

court or the Ofﬁce in which the patent owner took

a position on the scope of any claim of the patent.

Any statement submitted under this paragraph must

be accompanied by any other documents, pleadings,

or evidence from the proceeding in which the

statement was ﬁled that address the written

statement, and such statement and accompanying

information under this paragraph must be submitted

in redacted form to exclude information subject to

an applicable protective order.

(3) Submissions under paragraph (a)(2) of

this section must identify:

(i) The forum and proceeding in which

patent owner ﬁled each statement;

(ii) The speciﬁc papers and portions of

the papers submitted that contain the statements;

and

(iii) How each statement submitted is a

statement in which patent owner took a position on

the scope of any claim in the patent.

(b) Explanation: A submission pursuant to

paragraph (a) of this section:

(1) Must include an explanation in writing

of the pertinence and manner of applying any prior

art submitted under paragraph (a)(1) of this section

and any written statement and accompanying

information submitted under paragraph (a)(2) of this

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.499

section to at least one claim of the patent, in order

for the submission to become a part of the ofﬁcial

ﬁle of the patent; and

(2) May, if the submission is made by the

patent owner, include an explanation of how the

claims differ from any prior art submitted under

paragraph (a)(1) of this section or any written

statements and accompanying information submitted

under paragraph (a)(2) of this section.

proceeding has been requested and is pending for

the patent in which the submission is ﬁled, entry of

the submission into the ofﬁcial ﬁle of the patent is

subject to the provisions of §§ 1.502 and 1.902.

(d) Identity: If the person making the

submission wishes his or her identity to be excluded

from the patent ﬁle and kept conﬁdential, the

submission papers must be submitted anonymously

without any identiﬁcation of the person making the

submission.

(e) Certiﬁcate of Service: A submission under

this section by a person other than the patent owner

must include a certiﬁcation that a copy of the

submission was served in its entirety upon patent

owner at the address as provided for in § 1.33(c). A

submission by a person other than the patent owner

that fails to include proper proof of service as

required by § 1.248(b) will not be entered into the

patent ﬁle.

[46 FR 29185, May 29, 1981, effective July 1,

1981; para. (a) revised, 65 FR 76756, Dec. 7, 2000,

effective Feb. 5, 2001; revised, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012]

§ 1.502 Processing of prior art citations

during an ex parte reexamination

proceeding.

Citations by the patent owner under § 1.555 and by

an ex parte reexamination requester under either §

1.510 or § 1.535 will be entered in the reexamination

ﬁle during a reexamination proceeding. The entry

in the patent ﬁle of citations submitted after the date

of an order to reexamine pursuant to § 1.525 by

persons other than the patent owner, or an ex parte

reexamination requester under either § 1.510 or §

1.535, will be delayed until the reexamination

proceeding has been concluded by the issuance and

publication of a reexamination certiﬁcate. See §

1.902 for processing of prior art citations in patent

and reexamination ﬁles during an inter partes

reexamination proceeding ﬁled under § 1.913.

[Added 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective

May 16, 2007]

REQUEST FOR EX PARTE

REEXAMINATION

§ 1.510 Request for ex parte reexamination.

(a) Any person may, at any time during the

period of enforceability of a patent, ﬁle a request

for an ex parte reexamination by the Ofﬁce of any

claim of the patent on the basis of prior art patents

or printed publications cited under § 1.501, unless

prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C.

325(e)(1). The request must be accompanied by the

fee for requesting reexamination set in § 1.20(c)(1).

(b) Any request for reexamination must include

the following parts:

(1) A statement pointing out each substantial

new question of patentability based on prior patents

and printed publications.

(2) An identiﬁcation of every claim for

which reexamination is requested, and a detailed

explanation of the pertinency and manner of

applying the cited prior art to every claim for which

reexamination is requested. For each statement of

the patent owner and accompanying information

submitted pursuant to § 1.501(a)(2) which is relied

upon in the detailed explanation, the request must

explain how that statement is being used to

determine the proper meaning of a patent claim in

connection with the prior art applied to that claim

and how each relevant claim is being interpreted. If

appropriate, the party requesting reexamination may

also point out how claims distinguish over cited

prior art.

(3) A copy of every patent or printed

publication relied upon or referred to in paragraph

(b)(1) and (2) of this section accompanied by an

English language translation of all the necessary

and pertinent parts of any non-English language

patent or printed publication.

(4) A copy of the entire patent including the

front face, drawings, and speciﬁcation/claims (in

January 2018R-199

§ 1.510CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

double column format) for which reexamination is

requested, and a copy of any disclaimer, certiﬁcate

of correction, or reexamination certiﬁcate issued in

the patent. All copies must have each page plainly

written on only one side of a sheet of paper.

(5) A certiﬁcation that a copy of the request

ﬁled by a person other than the patent owner has

been served in its entirety on the patent owner at the

address as provided for in § 1.33(c). The name and

address of the party served must be indicated. If

service was not possible, a duplicate copy must be

supplied to the Ofﬁce.

(6) A certiﬁcation by the third party

requester that the statutory estoppel provisions of

35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not

prohibit the requester from ﬁling the ex parte

reexamination request.

requesting ex parte reexamination required by

paragraph (a) of this section and meet all the

requirements by paragraph (b) of this section, then

the person identiﬁed as requesting reexamination

will be so notiﬁed and will generally be given an

opportunity to complete the request within a

speciﬁed time. Failure to comply with the notice

will result in the ex parte reexamination request not

being granted a ﬁling date, and will result in

placement of the request in the patent ﬁle as a

citation if it complies with the requirements of §

1.501.

(d) The ﬁling date of the request for ex parte

reexamination is the date on which the request

satisﬁes all the requirements of this section.

(e) A request ﬁled by the patent owner may

include a proposed amendment in accordance with

§ 1.530.

(f) If a request is ﬁled by an attorney or agent

identifying another party on whose behalf the

request is being ﬁled, the attorney or agent must

have a power of attorney from that party or be acting

in a representative capacity pursuant to § 1.34.

[46 FR 29185, May 29, 1981, effective July 1,

1981; para. (a), 47 FR 41272, Sept. 17, 1982, effective

Oct. 1, 1982; para. (e) revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; paras. (b)(4) and (e) revised,

65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;

heading and para. (a) revised, 65 FR 76756, Dec. 7, 2000,

effective Feb. 5, 2001; paras. (c) and (d) revised, 71 FR

9260, Feb. 23, 2006, effective Mar. 27, 2006; paras. (c)

and (d) revised, 71 FR 44219, Aug. 4, 2006, effective

Aug. 4, 2006; para. (f) revised, 72 FR 18892, Apr. 16,

2007, effective May 16, 2007; paras. (a) and (b)(2)

revised and para. (b)(6) added, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012]

§ 1.515 Determination of the request for ex

parte reexamination.

(a) Within three months following the ﬁling

date of a request for an ex parte reexamination, an

examiner will consider the request and determine

whether or not a substantial new question of

patentability affecting any claim of the patent is

raised by the request and the prior art cited therein,

with or without consideration of other patents or

printed publications. A statement and any

accompanying information submitted pursuant to §

1.501(a)(2) will not be considered by the examiner

when making a determination on the request. The

examiner’s determination will be based on the

claims in effect at the time of the determination, will

become a part of the ofﬁcial ﬁle of the patent, and

will be given or mailed to the patent owner at the

address provided for in § 1.33(c) and to the person

requesting reexamination.

(b) Where no substantial new question of

patentability has been found, a refund of a portion

of the fee for requesting ex parte reexamination

will be made to the requester in accordance with §

1.26(c).

to the Director under § 1.181 within one month of

the mailing date of the examiner’s determination

refusing ex parte reexamination. Any such petition

must comply with § 1.181(b). If no petition is timely

ﬁled or if the decision on petition afﬁrms that no

substantial new question of patentability has been

raised, the determination shall be ﬁnal and

nonappealable.

[46 FR 29185, May 29, 1981, effective July 1,

1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (c) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; para. (a) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012]

R-200January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.515

§ 1.520 Ex parte reexamination at the

initiative of the Director.

The Director, at any time during the period of

enforceability of a patent, may determine whether

or not a substantial new question of patentability is

raised by patents or printed publications which have

been discovered by the Director or which have been

brought to the Director’s attention, even though no

request for reexamination has been ﬁled in

accordance with § 1.510 or § 1.913. The Director

may initiate ex parte reexamination without a

request for reexamination pursuant to § 1.510 or §

1.913. Normally requests from outside the Ofﬁce

that the Director undertake reexamination on his

own initiative will not be considered. Any

determination to initiate ex parte reexamination

under this section will become a part of the ofﬁcial

ﬁle of the patent and will be mailed to the patent

owner at the address as provided for in § 1.33(c).

[46 FR 29186, May 29, 1981, effective July 1,

1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003]

EX PARTE REEXAMINATION

§ 1.525 Order for ex parte reexamination.

(a) If a substantial new question of patentability

is found pursuant to § 1.515 or § 1.520, the

determination will include an order for ex parte

reexamination of the patent for resolution of the

question. If the order for ex parte reexamination

resulted from a petition pursuant to § 1.515(c), the

ex parte reexamination will ordinarily be conducted

by an examiner other than the examiner responsible

for the initial determination under § 1.515(a).

(b) The notice published in the Ofﬁcial Gazette

under § 1.11(c) will be considered to be constructive

notice and ex parte reexamination will proceed.

[46 FR 29186, May 29, 1981, effective July 1,

1981; heading and paras. (a) and (b) revised, 65 FR

76756, Dec. 7, 2000, effective Feb. 5, 2001]

§ 1.530 Statement by patent owner in ex

parte reexamination; amendment by patent

owner in ex parte or inter partes

reexamination; inventorship change in ex

parte or inter partes reexamination.

(a) Except as provided in § 1.510(e), no

statement or other response by the patent owner in

an ex parte reexamination proceeding shall be ﬁled

prior to the determinations made in accordance with

§ 1.515 or § 1.520. If a premature statement or other

response is ﬁled by the patent owner, it will not be

acknowledged or considered in making the

determination, and it will be returned or discarded

(at the Ofﬁce’s option).

(b) The order for ex parte reexamination will

set a period of not less than two months from the

date of the order within which the patent owner may

ﬁle a statement on the new question of patentability,

including any proposed amendments the patent

owner wishes to make.

clearly point out why the subject matter as claimed

is not anticipated or rendered obvious by the prior

art patents or printed publications, either alone or

in any reasonable combinations. Where the

reexamination request was ﬁled by a third party

requester, any statement ﬁled by the patent owner

must be served upon the ex parte reexamination

requester in accordance with § 1.248.

(d) Making amendments in a reexamination

proceeding. A proposed amendment in an ex parte

or an inter partes reexamination proceeding is made

by ﬁling a paper directing that proposed speciﬁed

changes be made to the patent speciﬁcation,

including the claims, or to the drawings. An

amendment paper directing that proposed speciﬁed

changes be made in a reexamination proceeding

may be submitted as an accompaniment to a request

ﬁled by the patent owner in accordance with §

1.510(e), as part of a patent owner statement in

accordance with paragraph (b) of this section, or,

where permitted, during the prosecution of the

reexamination proceeding pursuant to § 1.550(a) or

§ 1.937.

(1) Speciﬁcation other than the claims.

Changes to the speciﬁcation, other than to the

claims, must be made by submission of the entire

text of an added or rewritten paragraph including

markings pursuant to paragraph (f) of this section,

except that an entire paragraph may be deleted by

a statement deleting the paragraph, without

January 2018R-201

§ 1.530CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

presentation of the text of the paragraph. The precise

point in the speciﬁcation must be identiﬁed where

any added or rewritten paragraph is located. This

paragraph applies whether the amendment is

submitted on paper or compact disc (see §§ 1.96

and 1.825).

(2) Claims. An amendment paper must

include the entire text of each patent claim which

is being proposed to be changed by such amendment

paper and of each new claim being proposed to be

added by such amendment paper. For any claim

changed by the amendment paper, a parenthetical

expression “amended,” “twice amended,” etc.,

should follow the claim number. Each patent claim

proposed to be changed and each proposed added

claim must include markings pursuant to paragraph

(f) of this section, except that a patent claim or

proposed added claim should be canceled by a

statement canceling the claim, without presentation

of the text of the claim.

(3) Drawings. Any change to the patent

drawings must be submitted as a sketch on a separate

paper showing the proposed changes in red for

approval by the examiner. Upon approval of the

changes by the examiner, only new sheets of

drawings including the changes and in compliance

with § 1.84 must be ﬁled. Amended ﬁgures must

be identiﬁed as “Amended,” and any added ﬁgure

must be identiﬁed as “New.” In the event a ﬁgure

is canceled, the ﬁgure must be surrounded by

brackets and identiﬁed as “Canceled.”

(4) The formal requirements for papers

making up the reexamination proceeding other than

those set forth in this section are set out in § 1.52.

(e) Status of claims and support for claim

changes. Whenever there is an amendment to the

claims pursuant to paragraph (d) of this section,

there must also be supplied, on pages separate from

the pages containing the changes, the status (i.e.,

pending or canceled), as of the date of the

amendment, of all patent claims and of all added

claims, and an explanation of the support in the

disclosure of the patent for the changes to the claims

made by the amendment paper.

(f) Changes shown by markings. Any changes

relative to the patent being reexamined which are

made to the speciﬁcation, including the claims, must

include the following markings:

(1) The matter to be omitted by the

reexamination proceeding must be enclosed in

brackets; and

(2) The matter to be added by the

reexamination proceeding must be underlined.

(g) Numbering of patent claims preserved.

Patent claims may not be renumbered. The

numbering of any claims added in the reexamination

proceeding must follow the number of the highest

numbered patent claim.

(h) Amendment of disclosure may be required.

The disclosure must be amended, when required by

the Ofﬁce, to correct inaccuracies of description and

deﬁnition, and to secure substantial correspondence

between the claims, the remainder of the

speciﬁcation, and the drawings.

(i) Amendments made relative to patent. All

amendments must be made relative to the patent

speciﬁcation, including the claims, and drawings,

which are in effect as of the date of ﬁling the request

for reexamination.

(j) No enlargement of claim scope. No

amendment may enlarge the scope of the claims of

the patent or introduce new matter. No amendment

may be proposed for entry in an expired patent.

Moreover, no amendment, other than the

cancellation of claims, will be incorporated into the

patent by a certiﬁcate issued after the expiration of

the patent.

(k) Amendments not effective until certiﬁcate.

Although the Ofﬁce actions will treat proposed

amendments as though they have been entered, the

proposed amendments will not be effective until the

reexamination certiﬁcate is issued and published.

(l) Correction of inventorship in an ex parte or

inter partes reexamination proceeding.

(1) When it appears in a patent being

reexamined that the correct inventor or inventors

were not named, the Director may, on petition of

all the parties set forth in § 1.324(b)(1) and (b)(2),

including the assignees, and satisfactory proof of

the facts and payment of the fee set forth in §

1.20(b), or on order of a court before which such

matter is called in question, include in the

reexamination certiﬁcate to be issued under § 1.570

or § 1.997 an amendment naming only the actual

inventor or inventors. The petition must be

R-202January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.530

submitted as part of the reexamination proceeding

and must satisfy the requirements of § 1.324.

(2) Notwithstanding paragraph (l)(1) of this

section, if a petition to correct inventorship

satisfying the requirements of § 1.324 is ﬁled in a

reexamination proceeding, and the reexamination

proceeding is concluded other than by a

reexamination certiﬁcate under § 1.570 or § 1.997,

a certiﬁcate of correction indicating the change of

inventorship stated in the petition will be issued

upon request by the patentee.

[46 FR 29186, May 29, 1981, effective July 1,

1981; para. (d) revised, para. (e) removed, 62 FR 53132,

Oct. 10, 1997, effective Dec. 1, 1997; heading and para.

(d) revised, 65 FR 54604, Sept. 8, 2000, effective Nov.

7, 2000; paras. (e) through (l) added, 65 FR 54604, Sept.

8, 2000, effective Nov. 7, 2000; heading, paras. (a)-(c),

para. (d) introductory text and para. (l) revised, 65 FR

76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (l)(1)

revised, 68 FR 14332, Mar. 25, 2003, effective May 1,

2003; paras. (a), (k), and (l) revised, 72 FR 18892, Apr.

16, 2007, effective May 16, 2007; para. (l)(1) revised,

77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

§ 1.535 Reply by third party requester in ex

parte reexamination.

A reply to the patent owner’s statement under §

1.530 may be ﬁled by the ex parte reexamination

requester within two months from the date of service

of the patent owner’s statement. Any reply by the

ex parte requester must be served upon the patent

owner in accordance with § 1.248. If the patent

owner does not ﬁle a statement under § 1.530, no

reply or other submission from the ex parte

reexamination requester will be considered.

[46 FR 29186, May 29, 1981, effective July 1,

1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.540 Consideration of responses in ex

parte reexamination.

The failure to timely ﬁle or serve the documents set

forth in § 1.530 or in § 1.535 may result in their

being refused consideration. No submissions other

than the statement pursuant to § 1.530 and the reply

by the ex parte reexamination requester pursuant

to § 1.535 will be considered prior to examination.

[46 FR 29186, May 29, 1981, effective July 1,

1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.550 Conduct of ex parte reexamination

proceedings.

(a) All ex parte reexamination proceedings,

including any appeals to the Board of Patent Appeals

and Interferences, will be conducted with special

dispatch within the Ofﬁce. After issuance of the ex

parte reexamination order and expiration of the

time for submitting any responses, the examination

will be conducted in accordance with §§ 1.104

through 1.116 and will result in the issuance of an

ex parte reexamination certiﬁcate under § 1.570.

(b) The patent owner in an ex parte

reexamination proceeding will be given at least

thirty days to respond to any Ofﬁce action. In

response to any rejection, such response may include

further statements and/or proposed amendments or

new claims to place the patent in a condition where

all claims, if amended as proposed, would be

patentable.

owner in an ex parte reexamination proceeding may

be extended as provided in this paragraph.

(1) Any request for such an extension must

specify the requested period of extension and be

accompanied by the petition fee set forth in §

1.17(g).

(2) Any request for an extension in a third

party requested ex parte reexamination must be

ﬁled on or before the day on which action by the

patent owner is due, and the mere ﬁling of such a

request for extension will not effect the extension.

A request for an extension in a third party requested

ex parte reexamination will not be granted in the

absence of sufﬁcient cause or for more than a

reasonable time.

(3) Any request for an extension in a patent

owner requested or Director ordered ex parte

reexamination for up to two months from the time

period set in the Ofﬁce action must be ﬁled no later

than two months from the expiration of the time

period set in the Ofﬁce action. A request for an

extension in a patent owner requested or Director

ordered ex parte reexamination for more than two

months from the time period set in the Ofﬁce action

January 2018R-203

§ 1.550CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

must be ﬁled on or before the day on which action

by the patent owner is due, and the mere ﬁling of a

request for an extension for more than two months

from the time period set in the Ofﬁce action will

not effect the extension. The time for taking action

in a patent owner requested or Director ordered ex

parte reexamination will not be extended for more

than two months from the time period set in the

Ofﬁce action in the absence of sufﬁcient cause or

for more than a reasonable time.

(4) The reply or other action must in any

event be ﬁled prior to the expiration of the period

of extension, but in no situation may a reply or other

action be ﬁled later than the maximum time period

set by statute.

(5) See § 90.3(c) of this title for extensions

of time for ﬁling a notice of appeal to the U.S. Court

of Appeals for the Federal Circuit or for

commencing a civil action.

(d) If the patent owner fails to ﬁle a timely and

appropriate response to any Ofﬁce action or any

written statement of an interview required under §

1.560(b), the prosecution in the ex parte

reexamination proceeding will be a terminated

prosecution, and the Director will proceed to issue

and publish a certiﬁcate concluding the

reexamination proceeding under § 1.570 in

accordance with the last action of the Ofﬁce.

(e) If a response by the patent owner is not

timely ﬁled in the Ofﬁce, a petition may be ﬁled

pursuant to § 1.137 to revive a reexamination

prosecution terminated under paragraph (d) of this

section if the delay in response was unintentional.

(f) The reexamination requester will be sent

copies of Ofﬁce actions issued during the ex parte

reexamination proceeding. After ﬁling of a request

for ex parte reexamination by a third party

requester, any document ﬁled by either the patent

owner or the third party requester must be served

on the other party in the reexamination proceeding

in the manner provided by § 1.248. The document

must reﬂect service or the document may be refused

consideration by the Ofﬁce.

(g) The active participation of the ex parte

reexamination requester ends with the reply pursuant

to § 1.535, and no further submissions on behalf of

the reexamination requester will be acknowledged

or considered. Further, no submissions on behalf of

any third parties will be acknowledged or considered

unless such submissions are:

(1) in accordance with § 1.510 or § 1.535;

(2) entered in the patent ﬁle prior to the date

of the order for ex parte reexamination pursuant to

§ 1.525.

(h) Submissions by third parties, ﬁled after the

date of the order for ex parte reexamination

pursuant to § 1.525, must meet the requirements of

and will be treated in accordance with § 1.501(a).

(i) A petition in an ex parte reexamination

proceeding must be accompanied by the fee set forth

in § 1.20(c)(6), except for petitions under paragraph

by a patent owner, petitions under paragraph (e) of

this section to accept a delayed response by a patent

owner, petitions under § 1.78 to accept an

unintentionally delayed beneﬁt claim, and petitions

under § 1.530(l) for correction of inventorship in a

reexamination proceeding.

[46 FR 29186, May 29, 1981, effective July 1,

1981; para. (c), 49 FR 556, Jan. 4, 1984, effective Apr.

1, 1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective

Feb. 11, 1985; para. (c), 54 FR 29553, July 13, 1989,

effective Aug. 20, 1989; paras. (a), (b), & (e) revised, 62

FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras.

(a) and (b) revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; revised, 65 FR 76756, Dec. 7, 2000,

effective Feb. 5, 2001; paras. (d) & (e)(1) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para. (c)

revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22,

2004; para. (d) revised, 72 FR 18892, Apr. 16, 2007,

effective May 16, 2007; para. (i) added, 77 FR 48828,

Aug. 14, 2012, effective Sept. 16, 2012; paras. (c) and

(e) revised, 78 FR 62368, Oct. 21, 2013, effective Dec.

18, 2013]

§ 1.552 Scope of reexamination in ex parte

reexamination proceedings.

(a) Claims in an ex parte reexamination

proceeding will be examined on the basis of patents

or printed publications and, with respect to subject

matter added or deleted in the reexamination

proceeding, on the basis of the requirements of 35

U.S.C. 112.

(b) Claims in an ex parte reexamination

proceeding will not be permitted to enlarge the scope

of the claims of the patent.

R-204January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.552

paragraphs (a) and (b) of this section will not be

resolved in a reexamination proceeding. If such

issues are raised by the patent owner or third party

requester during a reexamination proceeding, the

existence of such issues will be noted by the

examiner in the next Ofﬁce action, in which case

the patent owner may consider the advisability of

ﬁling a reissue application to have such issues

considered and resolved.

(d) Any statement of the patent owner and any

accompanying information submitted pursuant to §

1.501(a)(2) which is of record in the patent being

reexamined (which includes any reexamination ﬁles

for the patent) may be used after a reexamination

proceeding has been ordered to determine the proper

meaning of a patent claim when applying patents

or printed publications.

[46 FR 29186, May 29, 1981, effective July 1,

1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (d) added, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012]

§ 1.555 Information material to patentability

in ex parte reexamination and inter partes

reexamination proceedings.

(a) A patent by its very nature is affected with

a public interest. The public interest is best served,

and the most effective reexamination occurs when,

at the time a reexamination proceeding is being

conducted, the Ofﬁce is aware of and evaluates the

teachings of all information material to patentability

in a reexamination proceeding. Each individual

associated with the patent owner in a reexamination

proceeding has a duty of candor and good faith in

dealing with the Ofﬁce, which includes a duty to

disclose to the Ofﬁce all information known to that

individual to be material to patentability in a

reexamination proceeding. The individuals who

have a duty to disclose to the Ofﬁce all information

known to them to be material to patentability in a

reexamination proceeding are the patent owner, each

attorney or agent who represents the patent owner,

and every other individual who is substantively

involved on behalf of the patent owner in a

reexamination proceeding. The duty to disclose the

information exists with respect to each claim

pending in the reexamination proceeding until the

claim is cancelled. Information material to the

patentability of a cancelled claim need not be

submitted if the information is not material to

patentability of any claim remaining under

consideration in the reexamination proceeding. The

duty to disclose all information known to be material

to patentability in a reexamination proceeding is

deemed to be satisﬁed if all information known to

be material to patentability of any claim in the patent

after issuance of the reexamination certiﬁcate was

cited by the Ofﬁce or submitted to the Ofﬁce in an

information disclosure statement. However, the

duties of candor, good faith, and disclosure have

not been complied with if any fraud on the Ofﬁce

was practiced or attempted or the duty of disclosure

was violated through bad faith or intentional

misconduct by, or on behalf of, the patent owner in

the reexamination proceeding. Any information

disclosure statement must be ﬁled with the items

listed in § 1.98(a) as applied to individuals

associated with the patent owner in a reexamination

proceeding, and should be ﬁled within two months

of the date of the order for reexamination, or as soon

thereafter as possible.

(b) Under this section, information is material

to patentability in a reexamination proceeding when

it is not cumulative to information of record or being

made of record in the reexamination proceeding,

and

(1) It is a patent or printed publication that

establishes, by itself or in combination with other

patents or printed publications, a prima facie case

of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a

position the patent owner takes in:

(i) Opposing an argument of

unpatentability relied on by the Ofﬁce, or

(ii) Asserting an argument of

patentability.

A prima facie case of unpatentability of a claim

pending in a reexamination proceeding is established

when the information compels a conclusion that a

claim is unpatentable under the preponderance of

evidence, burden-of-proof standard, giving each

term in the claim its broadest reasonable

construction consistent with the speciﬁcation, and

before any consideration is given to evidence which

may be submitted in an attempt to establish a

contrary conclusion of patentability.

January 2018R-205

§ 1.555CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

section rests upon the individuals designated in

paragraph (a) of this section and no evaluation will

be made by the Ofﬁce in the reexamination

proceeding as to compliance with this section. If

questions of compliance with this section are raised

by the patent owner or the third party requester

during a reexamination proceeding, they will be

noted as unresolved questions in accordance with §

1.552(c).

[46 FR 29187, May 29, 1981, effective July 1,

1981; 47 FR 21752, May 19, 1982, effective July 1, 1982;

paras. (a) and (b), 49 FR 556, Jan. 4, 1984, effective Apr.

1, 1984; revised 57 FR 2021, Jan. 17, 1992, effective

Mar. 16, 1992; heading and para. (c) revised, 65 FR

76756, Dec. 7, 2000, effective Feb. 5, 2001]

§ 1.560 Interviews in ex parte reexamination

proceedings.

(a) Interviews in ex parte reexamination

proceedings pending before the Ofﬁce between

examiners and the owners of such patents or their

attorneys or agents of record must be conducted in

the Ofﬁce at such times, within Ofﬁce hours, as the

respective examiners may designate. Interviews will

not be permitted at any other time or place without

the authority of the Director. Interviews for the

discussion of the patentability of claims in patents

involved in ex parte reexamination proceedings

will not be conducted prior to the ﬁrst ofﬁcial action.

Interviews should be arranged in advance. Requests

that reexamination requesters participate in

interviews with examiners will not be granted.

(b) In every instance of an interview with an

examiner in an ex parte reexamination proceeding,

a complete written statement of the reasons

presented at the interview as warranting favorable

action must be ﬁled by the patent owner. An

interview does not remove the necessity for response

to Ofﬁce actions as speciﬁed in § 1.111. Patent

owner’s response to an outstanding Ofﬁce action

after the interview does not remove the necessity

for ﬁling the written statement. The written

statement must be ﬁled as a separate part of a

response to an Ofﬁce action outstanding at the time

of the interview, or as a separate paper within one

month from the date of the interview, whichever is

later.

[46 FR 29187, May 29, 1981, effective July 1,

1981; revised, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

§ 1.565 Concurrent ofﬁce proceedings which

include an ex parte reexamination

proceeding.

(a) In an ex parte reexamination proceeding

before the Ofﬁce, the patent owner must inform the

Ofﬁce of any prior or concurrent proceedings in

which the patent is or was involved such as

interferences, reissues, ex parte reexaminations,

inter partes reexaminations, or litigation and the

results of such proceedings. See § 1.985 for

notiﬁcation of prior or concurrent proceedings in

an inter partes reexamination proceeding.

(b) If a patent in the process of ex parte

reexamination is or becomes involved in litigation,

the Director shall determine whether or not to

suspend the reexamination. See § 1.987 for inter

partes reexamination proceedings.

a prior ex parte reexamination proceeding is

pending and prosecution in the prior ex parte

reexamination proceeding has not been terminated,

the ex parte reexamination proceedings will usually

be merged and result in the issuance and publication

of a single certiﬁcate under § 1.570. For merger of

inter partes reexamination proceedings, see §

1.989(a). For merger of ex parte reexamination and

inter partes reexamination proceedings, see §

1.989(b).

(d) If a reissue application and an ex parte

reexamination proceeding on which an order

pursuant to § 1.525 has been mailed are pending

concurrently on a patent, a decision will usually be

made to merge the two proceedings or to suspend

one of the two proceedings. Where merger of a

reissue application and an ex parte reexamination

proceeding is ordered, the merged examination will

be conducted in accordance with §§ 1.171 through

1.179, and the patent owner will be required to place

and maintain the same claims in the reissue

application and the ex parte reexamination

proceeding during the pendency of the merged

proceeding. The examiner’s actions and responses

by the patent owner in a merged proceeding will

apply to both the reissue application and the ex

parte reexamination proceeding and will be

physically entered into both ﬁles. Any ex parte

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.560

reexamination proceeding merged with a reissue

application shall be concluded by the grant of the

reissued patent. For merger of a reissue application

and an inter partes reexamination, see § 1.991.

(e) If a patent in the process of ex parte

reexamination is or becomes involved in an

interference, the Director may suspend the

reexamination or the interference. The Director will

not consider a request to suspend an interference

unless a motion (§ 41.121(a)(3) of this title) to

suspend the interference has been presented to, and

denied by, an administrative patent judge, and the

request is ﬁled within ten (10) days of a decision by

an administrative patent judge denying the motion

for suspension or such other time as the

administrative patent judge may set. For concurrent

inter partes reexamination and interference of a

patent, see § 1.993.

[46 FR 29187, May 29, 1981, effective July 1,

1981; paras. (b) and (d), 47 FR 21753, May 19, 1982,

effective July 1, 1982; paras. (b) & (e), 49 FR 48416,

Dec. 12, 1984, 50 FR 23123, May 31, 1985, effective

Feb. 11, 1985; para (a) revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; revised, 65 FR 76756, Dec.

7, 2000, effective Feb. 5, 2001; paras. (b) & (e) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para.

(e) revised, 69 FR 49959, Aug. 12, 2004, effective Sept.

13, 2004; paras. (c) and (d) revised, 72 FR 18892, Apr.

16, 2007, effective May 16, 2007]

CERTIFICATE

§ 1.570 Issuance and publication of ex parte

reexamination certiﬁcate concludes ex parte

reexamination proceeding.

(a) To conclude an ex parte reexamination

proceeding, the Director will issue and publish an

ex parte reexamination certiﬁcate in accordance

with 35 U.S.C.307 setting forth the results of the

ex parte reexamination proceeding and the content

of the patent following the ex parte reexamination

proceeding.

(b) An ex parte reexamination certiﬁcate will

be issued and published in each patent in which an

ex parte reexamination proceeding has been ordered

under § 1.525 and has not been merged with any

inter partes reexamination proceeding pursuant to

§ 1.989(a). Any statutory disclaimer ﬁled by the

patent owner will be made part of the ex parte

reexamination certiﬁcate.

be mailed on the day of its date to the patent owner

at the address as provided for in § 1.33(c). A copy

of the ex parte reexamination certiﬁcate will also

be mailed to the requester of the ex parte

reexamination proceeding.

(d) If an ex parte reexamination certiﬁcate has

been issued and published which cancels all of the

claims of the patent, no further Ofﬁce proceedings

will be conducted with that patent or any reissue

applications or any reexamination requests relating

thereto.

(e) If the ex parte reexamination proceeding is

terminated by the grant of a reissued patent as

provided in § 1.565(d), the reissued patent will

constitute the ex parte reexamination certiﬁcate

required by this section and 35 U.S.C. 307.

(f) A notice of the issuance of each ex parte

reexamination certiﬁcate under this section will be

published in the Ofﬁcial Gazette on its date of

issuance.

[46 FR 29187, May 29, 1981, effective July 1,

1981; para. (e), 47 FR 21753, May 19, 1982, effective

July 1, 1982; revised, 65 FR 76756, Dec. 7, 2000,

effective Feb. 5, 2001; para. (a) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; heading and paras.

(a), (b), and (d) revised, 72 FR 18892, Apr. 16, 2007,

effective May 16, 2007]

Subpart E — Supplemental Examination of

Patents

§ 1.601 Filing of papers in supplemental

examination.

(a) A request for supplemental examination of

a patent must be ﬁled by the owner(s) of the entire

right, title, and interest in the patent.

(b) Any party other than the patent owner (i.e.,

any third party) is prohibited from ﬁling papers or

otherwise participating in any manner in a

supplemental examination proceeding.

a patent may be ﬁled at any time during the period

of enforceability of the patent.

[Added, 77 FR 48828, Aug. 14, 2012, effective

Sept. 16, 2012]

January 2018R-207

§ 1.601CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 1.605 Items of information.

(a) Each request for supplemental examination

may include no more than twelve items of

information believed to be relevant to the patent.

More than one request for supplemental examination

of the same patent may be ﬁled at any time during

the period of enforceability of the patent.

(b) An item of information includes a document

submitted as part of the request that contains

information, believed to be relevant to the patent,

that the patent owner requests the Ofﬁce to consider,

reconsider, or correct. If the information to be

considered, reconsidered, or corrected is not, at least

in part, contained within or based on any document

submitted as part of the request, the discussion

within the body of the request relative to the

information will be considered as an item of

information.

in accordance with § 1.2. To be considered, any

audio or video recording must be submitted in the

form of a written transcript.

(d) If one item of information is combined in

the request with one or more additional items of

information, each item of information of the

combination may be separately counted. Exceptions

include the combination of a non-English language

document and its translation, and the combination

of a document that is over 50 pages in length and

its summary pursuant to § 1.610(b)(8).

[Added, 77 FR 48828, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 1.610 Content of request for supplemental

examination.

(a) A request for supplemental examination must

be accompanied by the fee for ﬁling a request for

supplemental examination as set forth in §

1.20(k)(1), the fee for reexamination ordered as a

result of a supplemental examination proceeding as

set forth in § 1.20(k)(2), and any applicable

document size fees as set forth in § 1.20(k)(3).

(b) A request for supplemental examination

must include:

(1) An identiﬁcation of the number of the

patent for which supplemental examination is

requested.

(2) A list of the items of information that are

requested to be considered, reconsidered, or

corrected. Where appropriate, the list must meet the

requirements of § 1.98(b).

(3) A list identifying any other prior or

concurrent post-patent Ofﬁce proceedings involving

the patent for which supplemental examination is

being requested, including an identiﬁcation of the

type of proceeding, the identifying number of any

such proceeding (e.g., a control number or reissue

application number), and the ﬁling date of any such

proceeding.

(4) An identiﬁcation of each claim of the

patent for which supplemental examination is

requested.

(5) A separate, detailed explanation of the

relevance and manner of applying each item of

information to each claim of the patent for which

supplemental examination is requested.

(6) A copy of the patent for which

supplemental examination is requested and a copy

of any disclaimer or certiﬁcate issued for the patent.

(7) A copy of each item of information listed

in paragraph (b)(2) of this section, accompanied by

a written English translation of all of the necessary

and pertinent parts of any non-English language

item of information. The patent owner is not

required to submit copies of items of information

that form part of the discussion within the body of

the request as speciﬁed in § 1.605(b), or copies of

U.S. patents and U.S. patent application

publications.

(8) A summary of the relevant portions of

any submitted document, other than the request, that

is over 50 pages in length. The summary must

include citations to the particular pages containing

the relevant portions.

(9) An identiﬁcation of the owner(s) of the

entire right, title, and interest in the patent requested

to be examined, and a submission by the patent

owner in compliance with § 3.73(c) of this chapter

establishing the entirety of the ownership in the

patent requested to be examined.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.605

(1) A cover sheet itemizing each component

submitted as part of the request;

(2) A table of contents for the request;

(3) An explanation of how the claims

patentably distinguish over the items of information;

and

(4) An explanation of why each item of

information submitted with the request does or does

not raise a substantial new question of patentability.

(d) The ﬁling date of a request for supplemental

examination will not be granted if the request is not

in compliance with §§ 1.605, 1.615, and this section,

subject to the discretion of the Ofﬁce. If the Ofﬁce

determines that the request, as originally submitted,

is not entitled to a ﬁling date, the patent owner will

be so notiﬁed and will be given an opportunity to

complete the request within a speciﬁed time. If the

patent owner does not timely comply with the notice,

the request for supplemental examination will not

be granted a ﬁling date and the fee for reexamination

as set forth in § 1.20(k)(2) will be refunded. If the

patent owner timely ﬁles a corrected request in

response to the notice that properly addresses all of

the defects set forth in the notice and that otherwise

complies with all of the requirements of §§ 1.605,

1.615, and this section, the ﬁling date of the

supplemental examination request will be the receipt

date of the corrected request.

[Added, 77 FR 48828, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 1.615 Format of papers ﬁled in a

supplemental examination proceeding.

(a) All papers submitted in a supplemental

examination proceeding must be formatted in

accordance with § 1.52.

(b) Court documents and non-patent literature

may be redacted, but must otherwise be identical

both in content and in format to the original

documents, and, if a court document, to the

document submitted in court, and must not otherwise

be reduced in size or modiﬁed, particularly in terms

of font type, font size, line spacing, and margins.

Patents, patent application publications, and

third-party-generated afﬁdavits or declarations must

not be reduced in size or otherwise modiﬁed in the

manner described in this paragraph.

[Added, 77 FR 48828, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 1.620 Conduct of supplemental

examination proceeding.

(a) Within three months after the ﬁling date of

a request for supplemental examination, the Ofﬁce

will determine whether a substantial new question

of patentability affecting any claim of the patent is

raised by any of the items of information presented

in the request. The determination will generally be

limited to a review of the item(s) of information

identiﬁed in the request as applied to the identiﬁed

claim(s) of the patent. The determination will be

based on the claims in effect at the time of the

determination and will become a part of the ofﬁcial

record of the patent.

(b) The Ofﬁce may hold in abeyance action on

any petition or other paper ﬁled in a supplemental

examination proceeding until after the proceeding

is concluded by the electronic issuance of the

supplemental examination certiﬁcate as set forth in

§ 1.625.

paper is ﬁled in a supplemental examination

proceeding, it will not be entered into the ofﬁcial

ﬁle or considered, or if inadvertently entered, it will

be expunged.

(d) The patent owner must, as soon as possible

upon the discovery of any other prior or concurrent

post-patent Ofﬁce proceeding involving the patent

for which the current supplemental examination is

requested, ﬁle a paper limited to notifying the Ofﬁce

of the post-patent Ofﬁce proceeding, if such notice

has not been previously provided with the request.

The notice shall be limited to an identiﬁcation of

the post-patent Ofﬁce proceeding, including the type

of proceeding, the identifying number of any such

proceeding (e.g., a control number or reissue

application number), and the ﬁling date of any such

proceeding, without any discussion of the issues of

the current supplemental examination proceeding

or of the identiﬁed post-patent Ofﬁce proceeding(s).

(e) Interviews are prohibited in a supplemental

examination proceeding.

(f) No amendment may be ﬁled in a

supplemental examination proceeding.

January 2018R-209

§ 1.620CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(g) If the Ofﬁce becomes aware, during the

course of supplemental examination or of any

reexamination ordered under 35 U.S.C. 257 as a

result of the supplemental examination proceeding,

that a material fraud on the Ofﬁce may have been

committed in connection with the patent requested

to be examined, the supplemental examination

proceeding or any reexamination proceeding ordered

under 35 U.S.C. 257 will continue, and the matter

will be referred to the U.S. Attorney General in

accordance with 35 U.S.C. 257(e).

[Added, 77 FR 48828, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 1.625 Conclusion of supplemental

examination; publication of supplemental

examination certiﬁcate; procedure after

conclusion.

(a) A supplemental examination proceeding will

conclude with the electronic issuance of a

supplemental examination certiﬁcate. The

supplemental examination certiﬁcate will indicate

the result of the determination whether any of the

items of information presented in the request raised

a substantial new question of patentability.

(b) If the supplemental examination certiﬁcate

states that a substantial new question of patentability

is raised by one or more items of information in the

request, ex parte reexamination of the patent will

be ordered under 35 U.S.C. 257. Upon the

conclusion of the ex parte reexamination

proceeding, an ex parte reexamination certiﬁcate,

which will include a statement specifying that ex

parte reexamination was ordered under 35 U.S.C.

257, will be published. The electronically issued

supplemental examination certiﬁcate will remain as

part of the public record of the patent.

indicates that no substantial new question of

patentability is raised by any of the items of

information in the request, and ex parte

reexamination is not ordered under 35 U.S.C. 257,

the electronically issued supplemental examination

certiﬁcate will be published in due course. The fee

for reexamination ordered as a result of

supplemental examination, as set forth in §

1.20(k)(2), will be refunded in accordance with §

1.26(c).

(d) Any ex parte reexamination ordered under

35 U.S.C. 257 will be conducted in accordance with

§§ 1.530 through 1.570, which govern ex parte

reexamination, except that:

(1) The patent owner will not have the right

to ﬁle a statement pursuant to § 1.530, and the order

will not set a time period within which to ﬁle such

a statement;

(2) Reexamination of any claim of the patent

may be conducted on the basis of any item of

information as set forth in § 1.605, and is not limited

to patents and printed publications or to subject

matter that has been added or deleted during the

reexamination proceeding, notwithstanding §

1.552(a);

(3) Issues in addition to those raised by

patents and printed publications, and by subject

matter added or deleted during a reexamination

proceeding, may be considered and resolved,

notwithstanding § 1.552(c); and

(4) Information material to patentability will

be deﬁned by § 1.56(b), notwithstanding § 1.555(b).

[Added, 77 FR 48828, Aug. 14, 2012, effective

Sept. 16, 2012]

Subpart F — Adjustment and Extension of

Patent Term

ADJUSTMENT OF PATENT TERM DUE

TO EXAMINATION DELAY

§ 1.701 Extension of patent term due to

examination delay under the Uruguay Round

Agreements Act (original applications, other

than designs, ﬁled on or after June 8, 1995,

and before May 29, 2000).

(a) A patent, other than for designs, issued on

an application ﬁled on or after June 8, 1995, is

entitled to extension of the patent term if the

issuance of the patent was delayed due to:

(1) Interference or derivation proceedings

under 35 U.S.C. 135(a); and/or

(2) The application being placed under a

secrecy order under 35 U.S.C. 181; and/or

(3) Appellate review by the Patent Trial and

Appeal Board or by a Federal court under 35 U.S.C.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.625

141 or 145, if the patent was issued pursuant to a

decision in the review reversing an adverse

determination of patentability and if the patent is

not subject to a terminal disclaimer due to the

issuance of another patent claiming subject matter

that is not patentably distinct from that under

appellate review. If an application is remanded by

a panel of the Patent Trial and Appeal Board and

the remand is the last action by a panel of the Patent

Trial and Appeal Board prior to the mailing of a

notice of allowance under 35 U.S.C. 151 in the

application, the remand shall be considered a

decision in the review reversing an adverse

determination of patentability as that phrase is used

in 35 U.S.C. 154(b)(2) as amended by section 532(a)

of the Uruguay Round Agreements Act, Public Law

103–465, 108 Stat. 4809, 4983–85 (1994), and a

ﬁnal decision in favor of the applicant under

paragraph (c)(3) of this section. A remand by a panel

of the Patent Trial and Appeal Board shall not be

considered a decision in the review reversing an

adverse determination of patentability as provided

in this paragraph if there is ﬁled a request for

continued examination under 35 U.S.C. 132(b) that

was not ﬁrst preceded by the mailing, after such

remand, of at least one of an action under 35 U.S.C.

132 or a notice of allowance under 35 U.S.C. 151.

(b) The term of a patent entitled to extension

under paragraph (a) of this section shall be extended

for the sum of the periods of delay calculated under

paragraphs (c)(1), (c)(2), (c)(3) and (d) of this

section, to the extent that these periods are not

overlapping, up to a maximum of ﬁve years. The

extension will run from the expiration date of the

patent.

(c)(1) The period of delay under paragraph

(a)(1) of this section for an application is the sum

of the following periods, to the extent that the

periods are not overlapping:

(i) With respect to each interference or

derivation proceeding in which the application was

involved, the number of days, if any, in the period

beginning on the date the interference or derivation

proceeding was instituted to involve the application

in the interference or derivation proceeding and

ending on the date that the interference or derivation

proceeding was terminated with respect to the

application; and

(ii) The number of days, if any, in the

period beginning on the date prosecution in the

application was suspended by the Patent and

Trademark Ofﬁce due to interference or derivation

proceedings under 35 U.S.C. 135(a) not involving

the application and ending on the date of the

termination of the suspension.

(2) The period of delay under paragraph

(a)(2) of this section for an application is the sum

of the following periods, to the extent that the

periods are not overlapping:

(i) The number of days, if any, the

application was maintained in a sealed condition

under 35 U.S.C. 181;

(ii) The number of days, if any, in the

period beginning on the date of mailing of an

examiner’s answer under § 41.39 of this title in the

application under secrecy order and ending on the

date the secrecy order and any renewal thereof was

removed;

(iii) The number of days, if any, in the

period beginning on the date applicant was notiﬁed

that an interference or derivation proceeding would

be instituted but for the secrecy order and ending

on the date the secrecy order and any renewal

thereof was removed; and

(iv) The number of days, if any, in the

period beginning on the date of notiﬁcation under

§ 5.3(c) and ending on the date of mailing of the

notice of allowance under § 1.311.

(3) The period of delay under paragraph

(a)(3) of this section is the sum of the number of

days, if any, in the period beginning on the date on

which an appeal to the Patent Trial and Appeal

Board was ﬁled under 35 U.S.C. 134 and ending on

the date of a ﬁnal decision in favor of the applicant

by the Patent Trial and Appeal Board or by a Federal

court in an appeal under 35 U.S.C. 141 or a civil

action under 35 U.S.C. 145.

(d) The period of delay set forth in paragraph

(c)(3) shall be reduced by:

(1) Any time during the period of appellate

review that occurred before three years from the

ﬁling date of the ﬁrst national application for patent

presented for examination; and

(2) Any time during the period of appellate

review, as determined by the Director, during which

the applicant for patent did not act with due

January 2018R-211

§ 1.701CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

diligence. In determining the due diligence of an

applicant, the Director may examine the facts and

circumstances of the applicant’s actions during the

period of appellate review to determine whether the

applicant exhibited that degree of timeliness as may

reasonably be expected from, and which is ordinarily

exercised by, a person during a period of appellate

review.

(e) The provisions of this section apply only to

original patents, except for design patents, issued

on applications ﬁled on or after June 8, 1995, and

before May 29, 2000.

[Added, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; para. (e) added, 65 FR 56366, Sept. 18,

2000, effective Oct. 18, 2000; para. (d)(2) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(3)

revised, 69 FR 21704, Apr. 22, 2004, effective May 24,

2004; para. (c)(2)(ii) revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; paras. (a)(1), (a)(3),

(c)(1)(i)-(ii), (c)(2)(iii), and (c)(3) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012]

§ 1.702 Grounds for adjustment of patent

term due to examination delay under the

Patent Term Guarantee Act of 1999 (original

applications, other than designs, ﬁled on or

after May 29, 2000).

[Editor Note: Applies to any patent granted on or

after January 14, 2013*]

(a) Failure to take certain actions within

speciﬁed time frames. Subject to the provisions of

35 U.S.C. 154(b) and this subpart, the term of an

original patent shall be adjusted if the issuance of

the patent was delayed due to the failure of the

Ofﬁce to:

(1) Mail at least one of a notiﬁcation under

35 U.S.C. 132 or a notice of allowance under 35

U.S.C. 151 not later than fourteen months after the

date on which the application was ﬁled under 35

U.S.C. 111(a) or the date the national stage

commenced under 35 U.S.C. 371(b) or (f) in an

international application;

(2) Respond to a reply under 35 U.S.C. 132

or to an appeal taken under 35 U.S.C. 134 not later

than four months after the date on which the reply

was ﬁled or the appeal was taken;

(3) Act on an application not later than four

months after the date of a decision by the Patent

Trial and Appeal Board under 35 U.S.C. 134 or 135

or a decision by a Federal court under 35 U.S.C.

141, 145, or 146 where at least one allowable claim

remains in the application; or

(4) Issue a patent not later than four months

after the date on which the issue fee was paid under

35 U.S.C. 151 and all outstanding requirements were

satisﬁed.

(b) Three-year pendency. Subject to the

provisions of 35 U.S.C. 154(b) and this subpart, the

term of an original patent shall be adjusted if the

issuance of the patent was delayed due to the failure

of the Ofﬁce to issue a patent within three years

after the date on which the application was ﬁled

under 35 U.S.C. 111(a) or the national stage

commenced under 35 U.S.C. 371(b) or (f) in an

international application, but not including:

(1) Any time consumed by continued

examination of the application under 35 U.S.C.

132(b);

(2) Any time consumed by an interference

or derivation proceeding under 35 U.S.C. 135(a);

(3) Any time consumed by the imposition

of a secrecy order under 35 U.S.C. 181;

(4) Any time consumed by review by the

Patent Trial and Appeal Board or a Federal court;

(5) Any delay in the processing of the

application by the Ofﬁce that was requested by the

applicant.

derivation proceedings. Subject to the provisions

of 35 U.S.C. 154(b) and this subpart, the term of an

original patent shall be adjusted if the issuance of

the patent was delayed due to interference or

derivation proceedings under 35 U.S.C. 135(a).

(d) Delays caused by secrecy order. Subject to

the provisions of 35 U.S.C. 154(b) and this subpart,

the term of an original patent shall be adjusted if the

issuance of the patent was delayed due to the

application being placed under a secrecy order under

35 U.S.C. 181.

(e) Delays caused by successful appellate

review. Subject to the provisions of 35 U.S.C.

154(b) and this subpart, the term of an original

patent shall be adjusted if the issuance of the patent

was delayed due to review by the Patent Trial and

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.702

Appeal Board under 35 U.S.C. 134 or by a Federal

court under 35 U.S.C. 141 or 145, if the patent was

issued under a decision in the review reversing an

adverse determination of patentability. If an

application is remanded by a panel of the Patent

Trial and Appeal Board and the remand is the last

action by a panel of the Patent Trial and Appeal

Board prior to the mailing of a notice of allowance

under 35 U.S.C. 151 in the application, the remand

shall be considered a decision by the Patent Trial

and Appeal Board as that phrase is used in 35 U.S.C.

154(b)(1)(A)(iii), a decision in the review reversing

an adverse determination of patentability as that

phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a

ﬁnal decision in favor of the applicant under §

1.703(e). A remand by a panel of the Patent Trial

and Appeal Board shall not be considered a decision

in the review reversing an adverse determination of

patentability as provided in this paragraph if there

is ﬁled a request for continued examination under

35 U.S.C. 132(b) that was not ﬁrst preceded by the

mailing, after such remand, of at least one of an

action under 35 U.S.C. 132 or a notice of allowance

under 35 U.S.C. 151.

(f) The provisions of this section and §§ 1.703

through 1.705 apply only to original applications,

except applications for a design patent, ﬁled on or

after May 29, 2000, and patents issued on such

applications.

[Added, 65 FR 56366, Sept. 18, 2000, effective

Oct. 18, 2000; para. (e) revised, 69 FR 21704, Apr. 22,

2004, effective May 24, 2004; paras. (a)(3), (b)(2), (b)(4),

(c), and (e) revised, 77 FR 46615, Aug. 6, 2012, effective

Sept. 16, 2012; para. (a)(1) and para. (b) heading revised,

78 FR 19416, Apr. 1, 2013, effective Apr. 1, 2013

(adopted as ﬁnal, 79 FR 27755, May 15, 2014)]

[*The changes to para. (a)(1) and the heading of

para. (b) effective Apr. 1, 2013 apply to any patent

granted on or after Jan. 14, 2013]

§ 1.702 (pre-2013-04-01) Grounds for

adjustment of patent term due to

examination delay under the Patent Term

Guarantee Act of 1999 (original applications,

other than designs, ﬁled on or after May 29,

2000).

[Editor Note: Not applicable to patents granted on

or after January 14, 2013*]

(a) Failure to take certain actions within

speciﬁed time frames. Subject to the provisions of

35 U.S.C. 154(b) and this subpart, the term of an

original patent shall be adjusted if the issuance of

the patent was delayed due to the failure of the

Ofﬁce to:

(1) Mail at least one of a notiﬁcation under

35 U.S.C. 132 or a notice of allowance under 35

U.S.C. 151 not later than fourteen months after the

date on which the application was ﬁled under 35

U.S.C. 111(a) or fulﬁlled the requirements of 35

U.S.C. 371 in an international application;

(2) Respond to a reply under 35 U.S.C. 132

or to an appeal taken under 35 U.S.C. 134 not later

than four months after the date on which the reply

was ﬁled or the appeal was taken;

(3) Act on an application not later than four

months after the date of a decision by the Patent

Trial and Appeal Board under 35 U.S.C. 134 or 135

or a decision by a Federal court under 35 U.S.C.

141, 145, or 146 where at least one allowable claim

remains in the application; or

(4) Issue a patent not later than four months

after the date on which the issue fee was paid under

35 U.S.C. 151 and all outstanding requirements were

satisﬁed.

(b) Failure to issue a patent within three years

of the actual ﬁling date of the application. Subject

to the provisions of 35 U.S.C. 154(b) and this

subpart, the term of an original patent shall be

adjusted if the issuance of the patent was delayed

due to the failure of the Ofﬁce to issue a patent

within three years after the date on which the

application was ﬁled under 35 U.S.C. 111(a) or the

national stage commenced under 35 U.S.C. 371(b)

or (f) in an international application, but not

including:

(1) Any time consumed by continued

examination of the application under 35 U.S.C.

132(b);

(2) Any time consumed by an interference

or derivation proceeding under 35 U.S.C. 135(a);

(3) Any time consumed by the imposition

of a secrecy order under 35 U.S.C. 181;

(4) Any time consumed by review by the

Patent Trial and Appeal Board or a Federal court;

January 2018R-213

§ 1.702

(pre-2013-04-01)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(5) Any delay in the processing of the

application by the Ofﬁce that was requested by the

applicant.

derivation proceedings. Subject to the provisions

of 35 U.S.C. 154(b) and this subpart, the term of an

original patent shall be adjusted if the issuance of

the patent was delayed due to interference or

derivation proceedings under 35 U.S.C. 135(a).

(d) Delays caused by secrecy order. Subject to

the provisions of 35 U.S.C. 154(b) and this subpart,

the term of an original patent shall be adjusted if the

issuance of the patent was delayed due to the

application being placed under a secrecy order under

35 U.S.C. 181.

(e) Delays caused by successful appellate

review. Subject to the provisions of 35 U.S.C.

154(b) and this subpart, the term of an original

patent shall be adjusted if the issuance of the patent

was delayed due to review by the Patent Trial and

Appeal Board under 35 U.S.C. 134 or by a Federal

court under 35 U.S.C. 141 or 145, if the patent was

issued under a decision in the review reversing an

adverse determination of patentability. If an

application is remanded by a panel of the Patent

Trial and Appeal Board and the remand is the last

action by a panel of the Patent Trial and Appeal

Board prior to the mailing of a notice of allowance

under 35 U.S.C. 151 in the application, the remand

shall be considered a decision by the Patent Trial

and Appeal Board as that phrase is used in 35 U.S.C.

154(b)(1)(A)(iii), a decision in the review reversing

an adverse determination of patentability as that

phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a

ﬁnal decision in favor of the applicant under §

1.703(e). A remand by a panel of the Patent Trial

and Appeal Board shall not be considered a decision

in the review reversing an adverse determination of

patentability as provided in this paragraph if there

is ﬁled a request for continued examination under

35 U.S.C. 132(b) that was not ﬁrst preceded by the

mailing, after such remand, of at least one of an

action under 35 U.S.C. 132 or a notice of allowance

under 35 U.S.C. 151.

(f) The provisions of this section and §§ 1.703

through 1.705 apply only to original applications,

except applications for a design patent, ﬁled on or

after May 29, 2000, and patents issued on such

applications.

[Added, 65 FR 56366, Sept. 18, 2000, effective

Oct. 18, 2000; para. (e) revised, 69 FR 21704, Apr. 22,

2004, effective May 24, 2004; paras. (a)(3), (b)(2), (b)(4),

(c), and (e) revised, 77 FR 46615, Aug. 6, 2012, effective

Sept. 16, 2012]

[*See § 1.702 for more recent history and the rule

applicable to patents granted on or after January 14, 2013]

§ 1.703 Period of adjustment of patent term

due to examination delay.

[Editor Note: Para. (a)(1) below includes

amendments applicable only to patents granted on or after

January 14, 2013 and paras. (b)(4) and (e) below include

amendments applicable only to applications and patents

in which a notice of allowance issued on or after

September 17, 2012*]

(a) The period of adjustment under § 1.702(a)

is the sum of the following periods:

(1) The number of days, if any, in the period

beginning on the day after the date that is fourteen

months after the date on which the application was

ﬁled under 35 U.S.C. 111(a) or the date the national

stage commenced under 35 U.S.C. 371(b) or (f) in

an international application and ending on the date

of mailing of either an action under 35 U.S.C. 132,

or a notice of allowance under 35 U.S.C. 151,

whichever occurs ﬁrst;

(2) The number of days, if any, in the period

beginning on the day after the date that is four

months after the date a reply under § 1.111 was ﬁled

and ending on the date of mailing of either an action

under 35 U.S.C. 132, or a notice of allowance under

35 U.S.C. 151, whichever occurs ﬁrst;

(3) The number of days, if any, in the period

beginning on the day after the date that is four

months after the date a reply in compliance with §

1.113(c) was ﬁled and ending on the date of mailing

of either an action under 35 U.S.C. 132, or a notice

of allowance under 35 U.S.C. 151, whichever occurs

ﬁrst;

(4) The number of days, if any, in the period

beginning on the day after the date that is four

months after the date an appeal brief in compliance

with § 41.37 of this title was ﬁled and ending on the

date of mailing of any of an examiner’s answer

under § 41.39 of this title, an action under 35 U.S.C.

132, or a notice of allowance under 35 U.S.C. 151,

whichever occurs ﬁrst;

R-214January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.703

(5) The number of days, if any, in the period

beginning on the day after the date that is four

months after the date of a ﬁnal decision by the

Patent Trial and Appeal Board or by a Federal court

in an appeal under 35 U.S.C. 141 or a civil action

under 35 U.S.C. 145 or 146 where at least one

allowable claim remains in the application and

ending on the date of mailing of either an action

under 35 U.S.C. 132 or a notice of allowance under

35 U.S.C. 151, whichever occurs ﬁrst; and

(6) The number of days, if any, in the period

beginning on the day after the date that is four

months after the date the issue fee was paid and all

outstanding requirements were satisﬁed and ending

on the date a patent was issued.

(b) The period of adjustment under § 1.702(b)

is the number of days, if any, in the period beginning

on the day after the date that is three years after the

date on which the application was ﬁled under 35

U.S.C. 111(a) or the national stage commenced

under 35 U.S.C. 371(b) or (f) in an international

application and ending on the date a patent was

issued, but not including the sum of the following

periods:

(1) The number of days, if any, in the period

beginning on the date on which any request for

continued examination of the application under 35

U.S.C. 132(b) was ﬁled and ending on the date of

mailing of the notice of allowance under 35 U.S.C.

151;

(2)(i) The number of days, if any, in the

period beginning on the date an interference or

derivation proceeding was instituted to involve the

application in the interference or derivation

proceeding under 35 U.S.C. 135(a) and ending on

the date that the interference or derivation

proceeding was terminated with respect to the

application; and

(ii) The number of days, if any, in the

period beginning on the date prosecution in the

application was suspended by the Ofﬁce due to

interference or derivation proceedings under 35

U.S.C. 135(a) not involving the application and

ending on the date of the termination of the

suspension;

(3)(i) The number of days, if any, the

application was maintained in a sealed condition

under 35 U.S.C. 181;

(ii) The number of days, if any, in the

period beginning on the date of mailing of an

examiner’s answer under § 41.39 of this title in the

application under secrecy order and ending on the

date the secrecy order was removed;

(iii) The number of days, if any, in the

period beginning on the date applicant was notiﬁed

that an interference or derivation proceeding under

35 U.S.C. 135(a) would be instituted but for the

secrecy order and ending on the date the secrecy

order was removed; and

(iv) The number of days, if any, in the

period beginning on the date of notiﬁcation under

§ 5.3(c) of this chapter and ending on the date of

mailing of the notice of allowance under 35 U.S.C.

151; and,

(4) The number of days, if any, in the period

beginning on the date on which jurisdiction over the

application passes to the Patent Trial and Appeal

Board under § 41.35(a) of this chapter and ending

on the date that jurisdiction by the Patent Trial and

Appeal Board ends under § 41.35(b) of this chapter

or the date of the last decision by a Federal court in

an appeal under 35 U.S.C. 141 or a civil action under

35 U.S.C. 145, whichever is later.

is the sum of the following periods, to the extent

that the periods are not overlapping:

(1) The number of days, if any, in the period

beginning on the date an interference or derivation

proceeding was instituted to involve the application

in the interference or derivation proceeding under

35 U.S.C. 135(a) and ending on the date that the

interference or derivation proceeding was terminated

with respect to the application; and

(2) The number of days, if any, in the period

beginning on the date prosecution in the application

was suspended by the Ofﬁce due to interference or

derivation proceedings under 35 U.S.C. 135(a) not

involving the application and ending on the date of

the termination of the suspension.

(d) The period of adjustment under § 1.702(d)

is the sum of the following periods, to the extent

that the periods are not overlapping:

(1) The number of days, if any, the

application was maintained in a sealed condition

under 35 U.S.C. 181;

January 2018R-215

§ 1.703CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(2) The number of days, if any, in the period

beginning on the date of mailing of an examiner’s

answer under § 41.39 of this title in the application

under secrecy order and ending on the date the

secrecy order was removed;

(3) The number of days, if any, in the period

beginning on the date applicant was notiﬁed that an

interference or derivation proceeding under 35

U.S.C. 135(a) would be instituted but for the secrecy

order and ending on the date the secrecy order was

removed; and

(4) The number of days, if any, in the period

beginning on the date of notiﬁcation under § 5.3(c)

of this chapter and ending on the date of mailing of

the notice of allowance under 35 U.S.C. 151.

(e) The period of adjustment under § 1.702(e)

is the sum of the number of days, if any, in the

period beginning on the date on which jurisdiction

over the application passes to the Patent Trial and

Appeal Board under § 41.35(a) of this chapter and

ending on the date of a ﬁnal decision in favor of the

applicant by the Patent Trial and Appeal Board or

by a Federal court in an appeal under 35 U.S.C. 141

or a civil action under 35 U.S.C. 145.

(f) The adjustment will run from the expiration

date of the patent as set forth in 35 U.S.C. 154(a)(2).

To the extent that periods of delay attributable to

the grounds speciﬁed in § 1.702 overlap, the period

of adjustment granted under this section shall not

exceed the actual number of days the issuance of

the patent was delayed. The term of a patent entitled

to adjustment under § 1.702 and this section shall

be adjusted for the sum of the periods calculated

under paragraphs (a) through (e) of this section, to

the extent that such periods are not overlapping, less

the sum of the periods calculated under § 1.704. The

date indicated on any certiﬁcate of mailing or

transmission under § 1.8 shall not be taken into

account in this calculation.

(g) No patent, the term of which has been

disclaimed beyond a speciﬁed date, shall be adjusted

under § 1.702 and this section beyond the expiration

date speciﬁed in the disclaimer.

[Added, 65 FR 56366, Sept. 18, 2000, effective

Oct. 18, 2000; para. (f) revised, 69 FR 21704, Apr. 22,

2004, effective May 24, 2004; paras. (a)(4), (b)(3)(ii),

(b)(4), (d)(2), and (e) revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; paras. (a)(5), (b)(2),

(b)(3)(iii), (c)(1)-(2) and (d)(3) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012; paras. (b)(4) and

(e) revised, 77 FR 49354, Aug. 16, 2012, effective Sept.

17, 2012; para. (a)(1) revised, 78 FR 19416, Apr. 1, 2013,

effective Apr. 1, 2013 (adopted as ﬁnal, 79 FR 27755,

May 15, 2014); para. (b)(1) revised, 80 FR 1346, Jan. 9,

2015, effective Jan. 9, 2015]

[*The changes to para. (a)(1) effective Apr. 1, 2013

are applicable to any patent granted on or after Jan. 14,

2013. See § 1.703 (2012-09-17 thru 2013-03-31) for para.

(a)(1) applicable to patents granted before Jan. 14, 2013.

The changes to paras. (b)(4) and (e) effective Sept. 17,

2012 are applicable to any application in which a notice

of allowance was issued on or after Sept. 17, 2012, and

any patent issuing thereon. See § 1.703 (pre-2012-09-17)

for paras. (b)(4) and (e) that apply if the notice of

allowance was issued before Sept. 17, 2012.]

§ 1.703 (2012-09-17 thru 2013-03-31) Period

of adjustment of patent term due to

examination delay.

[Editor Note: The paragraphs below include

amendments applicable only to applications and patents

in which a notice of allowance issued on or after

September 17, 2012*]

(a) The period of adjustment under § 1.702(a)

is the sum of the following periods:

(1) The number of days, if any, in the period

beginning on the day after the date that is fourteen

months after the date on which the application was

ﬁled under 35 U.S.C. 111(a) or fulﬁlled the

requirements of 35 U.S.C. 371 and ending on the

date of mailing of either an action under 35 U.S.C.

132, or a notice of allowance under 35 U.S.C. 151,

whichever occurs ﬁrst;

*****

(b) The period of adjustment under § 1.702(b)

is the number of days, if any, in the period beginning

on the day after the date that is three years after the

date on which the application was ﬁled under 35

U.S.C. 111(a) or the national stage commenced

under 35 U.S.C. 371(b) or (f) in an international

application and ending on the date a patent was

issued, but not including the sum of the following

periods:

*****

(4) The number of days, if any, in the period

beginning on the date on which jurisdiction over the

application passes to the Patent Trial and Appeal

Board under § 41.35(a) of this chapter and ending

on the date that jurisdiction by the Patent Trial and

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.703 (2012-09-17

thru 2013-03-31)

Appeal Board ends under § 41.35(b) of this chapter

or the date of the last decision by a Federal court in

an appeal under 35 U.S.C. 141 or a civil action under

35 U.S.C. 145, whichever is later.

*****

[Added, 65 FR 56366, Sept. 18, 2000, effective

Oct. 18, 2000; para. (f) revised, 69 FR 21704, Apr. 22,

2004, effective May 24, 2004; paras. (a)(4), (b)(3)(ii),

(b)(4), (d)(2), and (e) revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; paras. (a)(5), (b)(2),

(b)(3)(iii), (c)(1)-(2) and (d)(3) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012; paras. (b)(4) and

(e) revised, 77 FR 49354, Aug. 16, 2012, effective Sept.

17, 2012]

[*The changes to paras. (b)(4) and (e) effective

Sept. 17, 2012 are applicable to any application in which

a notice of allowance was issued on or after Sept. 17,

2012, and any patent issuing thereon. See § 1.703

(pre-2012-09-17) for paras. (b)(4) and (e) otherwise in

effect.]

§ 1.703 (pre-2012-09-17) Period of

adjustment of patent term due to

examination delay.

[Editor Note: The paragraphs below are not

applicable to applications and patents in which a notice

of allowance was issued on or after September 17, 2012

or a patent was granted on or after January 14, 2013*]

*****

(b) The period of adjustment under § 1.702(b)

is the number of days, if any, in the period beginning

on the day after the date that is three years after the

date on which the application was ﬁled under 35

U.S.C. 111(a) or the national stage commenced

under 35 U.S.C. 371(b) or (f) in an international

application and ending on the date a patent was

issued, but not including the sum of the following

periods:

*****

(4) The number of days, if any, in the period

beginning on the date on which a notice of appeal

to the Board of Patent Appeals and Interferences

was ﬁled under 35 U.S.C. 134 and § 41.31 of this

title and ending on the date of the last decision by

the Board of Patent Appeals and Interferences or by

a Federal court in an appeal under 35 U.S.C. 141 or

a civil action under 35 U.S.C. 145, or on the date of

mailing of either an action under 35 U.S.C. 132, or

a notice of allowance under 35 U.S.C. 151,

whichever occurs ﬁrst, if the appeal did not result

in a decision by the Board of Patent Appeals and

Interferences.

*****

[Added, 65 FR 56366, Sept. 18, 2000, effective

Oct. 18, 2000; para. (f) revised, 69 FR 21704, Apr. 22,

2004, effective May 24, 2004; paras. (a)(4), (b)(3)(ii),

(b)(4), (d)(2), and (e) revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; paras. (a)(5), (b)(2),

(b)(3)(iii), (c)(1)-(2) and (d)(3) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012]

[*See § 1.703 for para. (a)(1) applicable to patents

granted on or after Jan. 14, 2013 and paras. (b)(4) and

(e) applicable if a notice of allowance was issued on or

after Sept. 17, 2012]

§ 1.704 Reduction of period of adjustment

of patent term.

[Editor Note: Some paragraphs have limited

applicability. See * below for details.]

(a) The period of adjustment of the term of a

patent under § 1.703(a) through (e) shall be reduced

by a period equal to the period of time during which

the applicant failed to engage in reasonable efforts

to conclude prosecution (processing or examination)

of the application.

(b) With respect to the grounds for adjustment

set forth in §§ 1.702(a) through (e), and in particular

the ground of adjustment set forth in § 1.702(b), an

applicant shall be deemed to have failed to engage

in reasonable efforts to conclude processing or

examination of an application for the cumulative

total of any periods of time in excess of three months

that are taken to reply to any notice or action by the

Ofﬁce making any rejection, objection, argument,

or other request, measuring such three-month period

from the date the notice or action was mailed or

given to the applicant, in which case the period of

adjustment set forth in § 1.703 shall be reduced by

the number of days, if any, beginning on the day

after the date that is three months after the date of

mailing or transmission of the Ofﬁce communication

notifying the applicant of the rejection, objection,

argument, or other request and ending on the date

the reply was ﬁled. The period, or shortened

statutory period, for reply that is set in the Ofﬁce

action or notice has no effect on the three-month

period set forth in this paragraph.

January 2018R-217

§ 1.704CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

applicant to engage in reasonable efforts to conclude

processing or examination of an application also

include the following circumstances, which will

result in the following reduction of the period of

adjustment set forth in § 1.703 to the extent that the

periods are not overlapping:

(1) Suspension of action under § 1.103 at

the applicant’s request, in which case the period of

adjustment set forth in § 1.703 shall be reduced by

the number of days, if any, beginning on the date a

request for suspension of action under § 1.103 was

ﬁled and ending on the date of the termination of

the suspension;

(2) Deferral of issuance of a patent under §

1.314, in which case the period of adjustment set

forth in § 1.703 shall be reduced by the number of

days, if any, beginning on the date a request for

deferral of issuance of a patent under § 1.314 was

ﬁled and ending on the date the patent was issued;

(3) Abandonment of the application or late

payment of the issue fee, in which case the period

of adjustment set forth in § 1.703 shall be reduced

by the number of days, if any, beginning on the date

of abandonment or the date after the date the issue

fee was due and ending on the earlier of:

(i) The date of mailing of the decision

reviving the application or accepting late payment

of the issue fee; or

(ii) The date that is four months after the

date the grantable petition to revive the application

or accept late payment of the issue fee was ﬁled;

(4) Failure to ﬁle a petition to withdraw the

holding of abandonment or to revive an application

within two months from the mailing date of a notice

of abandonment, in which case the period of

adjustment set forth in § 1.703 shall be reduced by

the number of days, if any, beginning on the day

after the date two months from the mailing date of

a notice of abandonment and ending on the date a

petition to withdraw the holding of abandonment or

to revive the application was ﬁled;

(5) Conversion of a provisional application

under 35 U.S.C. 111(b) to a nonprovisional

application under 35 U.S.C. 111(a) pursuant to 35

U.S.C. 111(b)(5), in which case the period of

adjustment set forth in § 1.703 shall be reduced by

the number of days, if any, beginning on the date

the application was ﬁled under 35 U.S.C. 111(b)

and ending on the date a request in compliance with

§1.53(c)(3) to convert the provisional application

into a nonprovisional application was ﬁled;

(6) Submission of a preliminary amendment

or other preliminary paper less than one month

before the mailing of an Ofﬁce action under 35

U.S.C. 132 or notice of allowance under 35 U.S.C.

151 that requires the mailing of a supplemental

Ofﬁce action or notice of allowance, in which case

the period of adjustment set forth in § 1.703 shall

be reduced by the lesser of:

(i) The number of days, if any, beginning

on the day after the mailing date of the original

Ofﬁce action or notice of allowance and ending on

the date of mailing of the supplemental Ofﬁce action

or notice of allowance; or

(ii) Four months;

(7) Submission of a reply having an

omission (§ 1.135(c)), in which case the period of

adjustment set forth in § 1.703 shall be reduced by

the number of days, if any, beginning on the day

after the date the reply having an omission was ﬁled

and ending on the date that the reply or other paper

correcting the omission was ﬁled;

(8) Submission of a supplemental reply or

other paper, other than a supplemental reply or other

paper expressly requested by the examiner, after a

reply has been ﬁled, in which case the period of

adjustment set forth in § 1.703 shall be reduced by

the number of days, if any, beginning on the day

after the date the initial reply was ﬁled and ending

on the date that the supplemental reply or other such

paper was ﬁled;

(9) Submission of an amendment or other

paper after a decision by the Patent Trial and Appeal

Board, other than a decision designated as

containing a new ground of rejection under §

41.50(b) of this title or statement under § 41.50(c)

of this title, or a decision by a Federal court, less

than one month before the mailing of an Ofﬁce

action under 35 U.S.C. 132 or notice of allowance

under 35 U.S.C. 151 that requires the mailing of a

supplemental Ofﬁce action or supplemental notice

of allowance, in which case the period of adjustment

set forth in § 1.703 shall be reduced by the lesser

of:

R-218January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.704

(i) The number of days, if any, beginning

on the day after the mailing date of the original

Ofﬁce action or notice of allowance and ending on

the mailing date of the supplemental Ofﬁce action

or notice of allowance; or

(ii) Four months;

(10) Submission of an amendment under §

1.312 or other paper, other than a request for

continued examination in compliance with § 1.114,

after a notice of allowance has been given or mailed,

in which case the period of adjustment set forth in

§ 1.703 shall be reduced by the lesser of:

(i) The number of days, if any, beginning

on the date the amendment under § 1.312 or other

paper was ﬁled and ending on the mailing date of

the Ofﬁce action or notice in response to the

amendment under § 1.312 or such other paper; or

(ii) Four months;

(11) Failure to ﬁle an appeal brief in

compliance with § 41.37 of this chapter within three

months from the date on which a notice of appeal

to the Patent Trial and Appeal Board was ﬁled under

35 U.S.C. 134 and § 41.31 of this chapter, in which

case the period of adjustment set forth in § 1.703

shall be reduced by the number of days, if any,

beginning on the day after the date three months

from the date on which a notice of appeal to the

Patent Trial and Appeal Board was ﬁled under 35

U.S.C. 134 and § 41.31 of this chapter, and ending

on the date an appeal brief in compliance with §

41.37 of this chapter or a request for continued

examination in compliance with § 1.114 was ﬁled;

(12) Submission of a request for continued

examination under 35 U.S.C. 132(b) after any notice

of allowance under 35 U.S.C. 151 has been mailed,

in which case the period of adjustment set forth in

§ 1.703 shall be reduced by the number of days, if

any, beginning on the day after the date of mailing

of the notice of allowance under 35 U.S.C. 151 and

ending on the date the request for continued

examination under 35 U.S.C. 132(b) was ﬁled;

(13) Failure to provide an application in

condition for examination as deﬁned in paragraph

(f) of this section within eight months from either

the date on which the application was ﬁled under

35 U.S.C. 111(a) or the date of commencement of

the national stage under 35 U.S.C. 371(b) or (f) in

an international application, in which case the period

of adjustment set forth in § 1.703 shall be reduced

by the number of days, if any, beginning on the day

after the date that is eight months from either the

date on which the application was ﬁled under 35

U.S.C. 111(a) or the date of commencement of the

national stage under 35 U.S.C. 371(b) or (f) in an

international application and ending on the date the

application is in condition for examination as

deﬁned in paragraph (f) of this section; and

(14) Further prosecution via a continuing

application, in which case the period of adjustment

set forth in § 1.703 shall not include any period that

is prior to the actual ﬁling date of the application

that resulted in the patent.

(d)(1) A paper containing only an

information disclosure statement in compliance with

§§ 1.97 and 1.98 will not be considered a failure to

engage in reasonable efforts to conclude prosecution

(processing or examination) of the application under

paragraphs (c)(6), (c)(8), (c)(9), or (c)(10) of this

section, and a request for continued examination in

compliance with § 1.114 with no submission other

than an information disclosure statement in

compliance with §§ 1.97 and 1.98 will not be

considered a failure to engage in reasonable efforts

to conclude prosecution (processing or examination)

of the application under paragraph (c)(12) of this

section, if the paper or request for continued

examination is accompanied by a statement that

each item of information contained in the

information disclosure statement:

(i) Was ﬁrst cited in any communication

from a patent ofﬁce in a counterpart foreign or

international application or from the Ofﬁce, and this

communication was not received by any individual

designated in § 1.56(c) more than thirty days prior

to the ﬁling of the information disclosure statement;

(ii) Is a communication that was issued

by a patent ofﬁce in a counterpart foreign or

international application or by the Ofﬁce, and this

communication was not received by any individual

designated in § 1.56(c) more than thirty days prior

to the ﬁling of the information disclosure statement.

(2) The thirty-day period set forth in

paragraph (d)(1) of this section is not extendable.

(e) The submission of a request under § 1.705(c)

for reinstatement of reduced patent term adjustment

will not be considered a failure to engage in

January 2018R-219

§ 1.704CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

reasonable efforts to conclude prosecution

(processing or examination) of the application under

paragraph (c)(10) of this section.

(f) An application ﬁled under 35 U.S.C. 111(a)

is in condition for examination when the application

includes a speciﬁcation, including at least one claim

and an abstract (§ 1.72(b)), and has papers in

compliance with § 1.52, drawings (if any) in

compliance with § 1.84, any English translation

required by § 1.52(d) or § 1.57(a), a sequence listing

in compliance with § 1.821 through § 1.825 (if

applicable), the inventor’s oath or declaration or an

application data sheet containing the information

speciﬁed in § 1.63(b), the basic ﬁling fee (§ 1.16(a)

or § 1.16(c)), the search fee (§ 1.16(k) or § 1.16(m)),

the examination fee (§ 1.16(o) or § 1.16(q)), any

certiﬁed copy of the previously ﬁled application

required by § 1.57(a), and any application size fee

required by the Ofﬁce under § 1.16(s). An

international application is in condition for

examination when the application has entered the

national stage as deﬁned in § 1.491(b), and includes

a speciﬁcation, including at least one claim and an

abstract (§ 1.72(b)), and has papers in compliance

with § 1.52, drawings (if any) in compliance with

§ 1.84, a sequence listing in compliance with § 1.821

through § 1.825 (if applicable), the inventor’s oath

or declaration or an application data sheet containing

the information speciﬁed in § 1.63(b), the search

fee (§ 1.492(b)), the examination fee (§ 1.492(c)),

and any application size fee required by the Ofﬁce

under § 1.492(j). An application shall be considered

as having papers in compliance with § 1.52,

drawings (if any) in compliance with § 1.84, and a

sequence listing in compliance with § 1.821 through

§ 1.825 (if applicable) for purposes of this paragraph

on the ﬁling date of the latest reply (if any)

correcting the papers, drawings, or sequence listing

that is prior to the date of mailing of either an action

under 35 U.S.C. 132 or a notice of allowance under

35 U.S.C. 151, whichever occurs ﬁrst.

[Added, 65 FR 56366, Sept. 18, 2000, effective

Oct. 18, 2000; para. (d) revised, 69 FR 21704, Apr. 22,

2004, effective May 24, 2004; para. (c)(9) revised, 69

FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para.

(c)(11) redesignated as (c)(12) and (c)(11) added, 72 FR

46716, Aug. 21, 2007 (implementation enjoined and

never became effective); para. (c)(11) removed and

(c)(12) redesignated as (c)(11), 74 FR 52686, Oct. 14,

2009, effective Oct. 14, 2009 (to remove changes made

by the ﬁnal rules in 72 FR 46716 from the CFR); para.

(d) revised, 76 FR 74700, Dec. 1, 2011, effective Dec.

1, 2011; para. (c)(9) introductory text revised, 77 FR

46615, Aug. 6, 2012, effective Sept. 16, 2012; paras.

(c)(10)(ii) and (c)(11) revised and para. (c)(12) added,

77 FR 49354, Aug. 16, 2012, effective Sept. 17, 2012;

para. (e) revised, 78 FR 19416, Apr. 1, 2013, effective

Apr. 1, 2013 (adopted as ﬁnal, 79 FR 27755, May 15,

2014); paras. (c)(11) and (c)(12) revised, paras. (c)(13)

and (f) added, 78 FR 62368, Oct. 21, 2013, effective Dec.

18, 2013; paras. (c)(10), (c)(12), (c)(13) and (d)(1)

revised, para. (c)(14) added, 80 FR 1346, Jan. 9, 2015,

effective Mar. 10, 2015]

[* Paragraphs (c)(10)(ii), (c)(11), (c)(12), (c)(13),

(c)(14), (e), and (f) above include changes having limited

applicability as follows:

Para. (c)(12) above includes changes applicable

only to applications in which a request for continued

examination under 35 U.S.C. 132(b) and 37 CFR 1.114

is ﬁled on or after Mar. 10, 2015. For para. (c)(12) in

effect for applications in which all requests for continued

examination were ﬁled prior to March 10, 2015, see §

1.704 (2013-12-18 thru 2015-03-09) below. Paras.

(c)(11), (c)(13), (c)(14) and (f) above include changes

applicable only to patent applications ﬁled under 35

U.S.C. 111 on or after December 18, 2013, and to

international patent applications in which the national

stage commenced under 35 U.S.C. 371 on or after

December 18, 2013. For paras. (c)(11) and (c)(13) in

effect for applications ﬁled before (and international

applications in which the national stage commenced

before) December 18, 2013, and in which a notice of

appeal was ﬁled on or after Sept. 17, 2012, see § 1.704

(2012-09-17 thru 2013-12-17). For para. (c)(11) in effect

for applications in which there was no notice of appeal

ﬁled on or after Sept. 17, 2012, see § 1.704

(pre-2012-09-17).

Para. (e) above includes changes applicable only

to applications in which a notice of allowance was mailed

on or after April 1, 2013. For para. (e) in effect for

applications in which there was no notice of allowance

mailed on or after April 1, 2013, see § 1.704 (pre

2013-03-31).

Para. (c)(10)(ii) above includes changes applicable

only to patent applications in which a notice of appeal

was ﬁled on or after Sept. 17, 2012. For para. (c)(10)(ii)

in effect for applications in which there was no notice of

appeal ﬁled on or after Sept. 17, 2012, see § 1.704

(pre-2012-09-17).]

R-220January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.704

§ 1.704 (2013-12-18 thru 2015-03-09)

Reduction of period of adjustment of patent

term.

[The following paragraphs have limited

applicability, see * below. ]

*****

applicant to engage in reasonable efforts to conclude

processing or examination of an application also

include the following circumstances, which will

result in the following reduction of the period of

adjustment set forth in § 1.703 to the extent that the

periods are not overlapping:

*****

(12) Failure to provide an application in

condition for examination as deﬁned in paragraph

(f) of this section within eight months from either

the date on which the application was ﬁled under

35 U.S.C. 111(a) or the date of commencement of

the national stage under 35 U.S.C. 371(b) or (f) in

an international application, in which case the period

of adjustment set forth in § 1.703 shall be reduced

by the number of days, if any, beginning on the day

after the date that is eight months from either the

date on which the application was ﬁled under 35

U.S.C. 111(a) or the date of commencement of the

national stage under 35 U.S.C. 371(b) or (f) in an

international application and ending on the date the

application is in condition for examination as

deﬁned in paragraph (f) of this section; and

(13) Further prosecution via a continuing

application, in which case the period of adjustment

set forth in § 1.703 shall not include any period that

is prior to the actual ﬁling date of the application

that resulted in the patent.

[*para. (c)(12) above is applicable to those

applications in which all requests for continued

examination under 35 U.S.C. 132(b) and 37 CFR 1.114

were ﬁled prior to Mar. 10, 2015. See 37 CFR 1.704

above, for para. (c)(12) applicable to applications in

which a request for continued examination was ﬁled on

or after Mar. 10, 2015.

§ 1.704 (2012-09-17 thru 2013-12-17)

Reduction of period of adjustment of patent

term.

[Editor Note: Paras. (c)(11-12) and (f) below are

applicable to applications ﬁled before (and international

applications in which the national stage commenced

before) December 18, 2013 in which a notice of appeal

was ﬁled on or after Sept. 17, 2012. ]

*****

(11) Failure to ﬁle an appeal brief in

compliance with § 41.37 of this chapter within three

months from the date on which a notice of appeal

to the Patent Trial and Appeal Board was ﬁled under

35 U.S.C. 134 and § 41.31 of this chapter, in which

case the period of adjustment set forth in § 1.703

shall be reduced by the number of days, if any,

beginning on the day after the date three months

from the date on which a notice of appeal to the

Patent Trial and Appeal Board was ﬁled under 35

U.S.C. 134 and § 41.31 of this chapter, and ending

on the date an appeal brief in compliance with §

41.37 of this chapter or a request for continued

examination in compliance with § 1.114 was ﬁled;

and

(12) Further prosecution via a continuing

application, in which case the period of adjustment

set forth in § 1.703 shall not include any period that

is prior to the actual ﬁling date of the application

that resulted in the patent.

*****

[* Paras. (c)(11) and (c)(12) above apply to

applications ﬁled under 35 U.S.C. 111 before Dec. 18,

2013, and international applications in which the national

stage commenced under 35 U.S.C. 371 on or after Dec.

18, 2013, and in which a notice of appeal was ﬁled on or

after Sept. 17, 2012. For the current rule, including paras.

(c)(11) and (c)(12) applicable to applications ﬁled (or in

which the national stage commenced) on or after Dec.

18, 2013, see § 1.704. For para. (c)(11) in effect for

applications in which there was no notice of appeal ﬁled

on or after Sept. 17, 2012, see § 1.704 (pre-2012-09-17).]

§ 1.704 (pre-2013-03-31) Reduction of period

of adjustment of patent term.

[Editor Note: Para. (e) below applies to

applications in which no notice of allowance was mailed

on or after April 1, 2013.]

January 2018R-221

§ 1.704

(pre-2013-03-31)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

*****

(e) Submission of an application for patent term

adjustment under § 1.705(b) (with or without request

under § 1.705(c) for reinstatement of reduced patent

term adjustment) will not be considered a failure to

engage in reasonable efforts to conclude prosecution

(processing or examination) of the application under

paragraph (c)(10) of this section.

[*See 1.704 for current para. (e).]

§ 1.704 (pre-2012-09-17) Reduction of period

of adjustment of patent term.

[Editor Note: Applicable to applications in which

a notice of appeal under 37 CFR 41.31 was ﬁled before

September 17, 2012*]

*****

(ii) Four months; and

(11) Further prosecution via a continuing

application, in which case the period of adjustment

set forth in § 1.703 shall not include any period that

is prior to the actual ﬁling date of the application

that resulted in the patent.

*****

[*See § 1.704 for the current rule, including paras.

(c)(10)(ii), (c)(11), (c)(12), and (c)(13) applicable to

applications ﬁled (or in which the national stage

commenced) on or after Dec. 18, 2013 and in which a

notice of appeal under 37 CFR 41.31 was ﬁled on or after

Sept. 17, 2012.]

§ 1.705 Patent term adjustment

determination.

[Editor Note: Paras. (a)-(d) below include

amendments applicable only to patents granted on or after

January 14, 2013*]

(a) The patent will include notiﬁcation of any

patent term adjustment under 35 U.S.C. 154(b).

(b) Any request for reconsideration of the patent

term adjustment indicated on the patent must be by

way of an application for patent term adjustment

ﬁled no later than two months from the date the

patent was granted. This two-month time period

may be extended under the provisions of § 1.136(a).

An application for patent term adjustment under this

section must be accompanied by:

(1) The fee set forth in § 1.18(e); and

(2) A statement of the facts involved,

specifying:

(i) The correct patent term adjustment

and the basis or bases under § 1.702 for the

adjustment;

(ii) The relevant dates as speciﬁed in §§

1.703(a) through (e) for which an adjustment is

sought and the adjustment as speciﬁed in § 1.703(f)

to which the patent is entitled;

(iii) Whether the patent is subject to a

terminal disclaimer and any expiration date speciﬁed

in the terminal disclaimer; and

(iv)(A) Any circumstances during the

prosecution of the application resulting in the patent

that constitute a failure to engage in reasonable

efforts to conclude processing or examination of

such application as set forth in § 1.704; or

(B) That there were no circumstances

constituting a failure to engage in reasonable efforts

to conclude processing or examination of such

application as set forth in § 1.704.

of the period of adjustment reduced pursuant to §

1.704(b) for failing to reply to a rejection, objection,

argument, or other request within three months of

the date of mailing of the Ofﬁce communication

notifying the applicant of the rejection, objection,

argument, or other request must be ﬁled prior to the

issuance of the patent. This time period is not

extendable. Any request for reinstatement of all or

part of the period of adjustment reduced pursuant

to § 1.704(b) under this paragraph must also be

accompanied by:

(1) The fee set forth in § 1.18(f); and

(2) A showing to the satisfaction of the

Director that, in spite of all due care, the applicant

was unable to reply to the rejection, objection,

argument, or other request within three months of

the date of mailing of the Ofﬁce communication

notifying the applicant of the rejection, objection,

argument, or other request. The Ofﬁce shall not

grant any request for reinstatement for more than

three additional months for each reply beyond three

months from the date of mailing of the Ofﬁce

R-222January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.704

(pre-2012-09-17)

communication notifying the applicant of the

rejection, objection, argument, or other request.

(d) No submission or petition on behalf of a

third party concerning patent term adjustment under

35 U.S.C. 154(b) will be considered by the Ofﬁce.

Any such submission or petition will be returned to

the third party, or otherwise disposed of, at the

convenience of the Ofﬁce.

[Added, 65 FR 56366, Sept. 18, 2000, effective

Oct. 18, 2000; para. (c)(2) revised, 68 FR 14332, Mar.

25, 2003, effective May 1, 2003; para. (d) revised, 69 FR

21704, Apr. 22, 2004, effective May 24, 2004; paras. (d)

and (e) removed, para. (f) redesignated as para. (d), and

paras. (a), (b) introductory text, and (c) introductory text

revised, 78 FR 19416, Apr. 1, 2013, effective Apr. 1,

2013 (adopted as ﬁnal, 79 FR 27755, May 15, 2014)]

[*The changes to paras. (a)-(f) effective Apr. 1,

2013 are applicable to any patent granted on or after Jan.

14, 2013. See § 1.705 (pre-2013-04-01) for paras. (a)-(f)

in effect with respect to applications granted prior to Jan.

14, 2013.]

§ 1.705 (pre-2013-04-01) Patent term

adjustment determination.

[Editor Note: Applicable to patents granted before

January 14, 2013*]

(a) The notice of allowance will include

notiﬁcation of any patent term adjustment under 35

U.S.C. 154(b).

(b) Any request for reconsideration of the patent

term adjustment indicated in the notice of allowance,

except as provided in paragraph (d) of this section,

and any request for reinstatement of all or part of

the term reduced pursuant to §1.704(b) must be by

way of an application for patent term adjustment.

An application for patent term adjustment under this

section must be ﬁled no later than the payment of

the issue fee but may not be ﬁled earlier than the

date of mailing of the notice of allowance. An

application for patent term adjustment under this

section must be accompanied by:

(1) The fee set forth in § 1.18(e); and

(2) A statement of the facts involved,

specifying:

(i) The correct patent term adjustment

and the basis or bases under § 1.702 for the

adjustment;

(ii) The relevant dates as speciﬁed in §§

1.703(a) through (e) for which an adjustment is

sought and the adjustment as speciﬁed in § 1.703(f)

to which the patent is entitled;

(iii) Whether the patent is subject to a

terminal disclaimer and any expiration date speciﬁed

in the terminal disclaimer; and

(iv)(A) Any circumstances during the

prosecution of the application resulting in the patent

that constitute a failure to engage in reasonable

efforts to conclude processing or examination of

such application as set forth in § 1.704; or

(B) That there were no circumstances

constituting a failure to engage in reasonable efforts

to conclude processing or examination of such

application as set forth in § 1.704.

under this section that requests reinstatement of all

or part of the period of adjustment reduced pursuant

to § 1.704(b) for failing to reply to a rejection,

objection, argument, or other request within three

months of the date of mailing of the Ofﬁce

communication notifying the applicant of the

rejection, objection, argument, or other request must

also be accompanied by:

(1) The fee set forth in § 1.18(f); and

(2) A showing to the satisfaction of the

Director that, in spite of all due care, the applicant

was unable to reply to the rejection, objection,

argument, or other request within three months of

the date of mailing of the Ofﬁce communication

notifying the applicant of the rejection, objection,

argument, or other request. The Ofﬁce shall not

grant any request for reinstatement for more than

three additional months for each reply beyond three

months from the date of mailing of the Ofﬁce

communication notifying the applicant of the

rejection, objection, argument, or other request.

(d) If there is a revision to the patent term

adjustment indicated in the notice of allowance, the

patent will indicate the revised patent term

adjustment. If the patent indicates or should have

indicated a revised patent term adjustment, any

request for reconsideration of the patent term

adjustment indicated in the patent must be ﬁled

within two months of the date the patent issued and

must comply with the requirements of paragraphs

(b)(1) and (b)(2) of this section. Any request for

January 2018R-223

§ 1.705

(pre-2013-04-01)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

reconsideration under this section that raises issues

that were raised, or could have been raised, in an

application for patent term adjustment under

paragraph (b) of this section shall be dismissed as

untimely as to those issues.

(e) The periods set forth in this section are not

extendable.

(f) No submission or petition on behalf of a third

party concerning patent term adjustment under 35

U.S.C. 154(b) will be considered by the Ofﬁce. Any

such submission or petition will be returned to the

third party, or otherwise disposed of, at the

convenience of the Ofﬁce.

[Added, 65 FR 56366, Sept. 18, 2000, effective

Oct. 18, 2000; para. (c)(2) revised, 68 FR 14332, Mar.

25, 2003, effective May 1, 2003; para. (d) revised, 69 FR

21704, Apr. 22, 2004, effective May 24, 2004]

[*See § 1.705 for the rule applicable to patents

granted on or after Jan. 14, 2013.]

EXTENSION OF PATENT TERM DUE TO

REGULATORY REVIEW

§ 1.710 Patents subject to extension of the

patent term.

(a) A patent is eligible for extension of the

patent term if the patent claims a product as deﬁned

in paragraph (b) of this section, either alone or in

combination with other ingredients that read on a

composition that received permission for

commercial marketing or use, or a method of using

such a product, or a method of manufacturing such

a product, and meets all other conditions and

requirements of this subpart.

(b) The term product referred to in paragraph

(a) of this section means —

(1) The active ingredient of a new human

drug, antibiotic drug, or human biological product

(as those terms are used in the Federal Food, Drug,

and Cosmetic Act and the Public Health Service

Act) including any salt or ester of the active

ingredient, as a single entity or in combination with

another active ingredient; or

(2) The active ingredient of a new animal

drug or veterinary biological product (as those terms

are used in the Federal Food, Drug, and Cosmetic

Act and the Virus-Serum-Toxin Act) that is not

primarily manufactured using recombinant DNA,

recombinant RNA, hybridoma technology, or other

processes including site speciﬁc genetic

manipulation techniques, including any salt or ester

of the active ingredient, as a single entity or in

combination with another active ingredient; or

(3) Any medical device, food additive, or

color additive subject to regulation under the Federal

Food, Drug, and Cosmetic Act.

[Added 52 FR 9394, Mar. 24, 1987, effective May

26, 1987; amended, 54 FR 30375, July 20, 1989, effective

Aug. 22, 1989]

§ 1.720 Conditions for extension of patent

term.

The term of a patent may be extended if:

(a) The patent claims a product or a method of

using or manufacturing a product as deﬁned in §

1.710;

(b) The term of the patent has never been

previously extended, except for extensions issued

pursuant to §§ 1.701, 1.760, or § 1.790;

compliance with § 1.740;

(d) The product has been subject to a regulatory

review period as deﬁned in 35 U.S.C. 156(g) before

its commercial marketing or use;

(e) The product has received permission for

commercial marketing or use and —

(1) The permission for the commercial

marketing or use of the product is the ﬁrst received

permission for commercial marketing or use under

the provision of law under which the applicable

regulatory review occurred, or

(2) In the case of a patent other than one

directed to subject matter within § 1.710(b)(2)

claiming a method of manufacturing the product

that primarily uses recombinant DNA technology

in the manufacture of the product, the permission

for the commercial marketing or use is the ﬁrst

received permission for the commercial marketing

or use of a product manufactured under the process

claimed in the patent, or

(3) In the case of a patent claiming a new

animal drug or a veterinary biological product that

is not covered by the claims in any other patent that

has been extended, and has received permission for

R-224January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.710

the commercial marketing or use in

non-food-producing animals and in food-producing

animals, and was not extended on the basis of the

regulatory review period for use in

non-food-producing animals, the permission for the

commercial marketing or use of the drug or product

after the regulatory review period for use in

food-producing animals is the ﬁrst permitted

commercial marketing or use of the drug or product

for administration to a food-producing animal.

(f) The application is submitted within the

sixty-day period beginning on the date the product

ﬁrst received permission for commercial marketing

or use under the provisions of law under which the

applicable regulatory review period occurred; or in

the case of a patent claiming a method of

manufacturing the product which primarily uses

recombinant DNA technology in the manufacture

of the product, the application for extension is

submitted within the sixty-day period beginning on

the date of the ﬁrst permitted commercial marketing

or use of a product manufactured under the process

claimed in the patent; or in the case of a patent that

claims a new animal drug or a veterinary biological

product that is not covered by the claims in any other

patent that has been extended, and said drug or

product has received permission for the commercial

marketing or use in non-food-producing animals,

the application for extension is submitted within the

sixty-day period beginning on the date of the ﬁrst

permitted commercial marketing or use of the drug

or product for administration to a food-producing

animal;

(g) The term of the patent, including any interim

extension issued pursuant to § 1.790, has not expired

before the submission of an application in

compliance with § 1.741; and

(h) No other patent term has been extended for

the same regulatory review period for the product.

[Added 52 FR 9395, Mar. 24, 1987, effective May

26, 1987; paras. (e) & (f) amended, 54 FR 30375, July

20, 1989, effective Aug. 22, 1989; paras. (b) and (g)

revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7,

2000]

§ 1.730 Applicant for extension of patent

term; signature requirements.

(a) Any application for extension of a patent

term must be submitted by the owner of record of

the patent or its agent and must comply with the

requirements of § 1.740.

(b) If the application is submitted by the patent

owner, the application must be signed either by:

(1) The patent owner in compliance with §

3.73(c) of this chapter; or

(2) A registered practitioner on behalf of the

patent owner.

the patent owner by an agent of the patent owner

(e.g., a licensee of the patent owner), the application

must be signed by a registered practitioner on behalf

of the agent. The Ofﬁce may require proof that the

agent is authorized to act on behalf of the patent

owner.

(d) If the application is signed by a registered

practitioner, the Ofﬁce may require proof that the

practitioner is authorized to act on behalf of the

patent owner or agent of the patent owner.

[Added 52 FR 9395, Mar. 24, 1987, effective May

26, 1987; revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; para. (b)(1) revised, 77 FR 48776, Aug.

14, 2012, effective Sept. 16, 2012]

§ 1.740 Formal requirements for application

for extension of patent term; correction of

informalities.

(a) An application for extension of patent term

must be made in writing to the Director. A formal

application for the extension of patent term must

include:

(1) A complete identiﬁcation of the approved

product as by appropriate chemical and generic

name, physical structure or characteristics;

(2) A complete identiﬁcation of the Federal

statute including the applicable provision of law

under which the regulatory review occurred;

(3) An identiﬁcation of the date on which

the product received permission for commercial

marketing or use under the provision of law under

which the applicable regulatory review period

occurred;

(4) In the case of a drug product, an

identiﬁcation of each active ingredient in the product

and as to each active ingredient, a statement that it

has not been previously approved for commercial

January 2018R-225

§ 1.740CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

marketing or use under the Federal Food, Drug, and

Cosmetic Act, the Public Health Service Act, or the

Virus-Serum-Toxin Act, or a statement of when the

active ingredient was approved for commercial

marketing or use (either alone or in combination

with other active ingredients), the use for which it

was approved, and the provision of law under which

it was approved.

(5) A statement that the application is being

submitted within the sixty day period permitted for

submission pursuant to § 1.720(f) and an

identiﬁcation of the date of the last day on which

the application could be submitted;

(6) A complete identiﬁcation of the patent

for which an extension is being sought by the name

of the inventor, the patent number, the date of issue,

and the date of expiration;

(7) A copy of the patent for which an

extension is being sought, including the entire

speciﬁcation (including claims) and drawings;

(8) A copy of any disclaimer, certiﬁcate of

correction, receipt of maintenance fee payment, or

reexamination certiﬁcate issued in the patent;

(9) A statement that the patent claims the

approved product, or a method of using or

manufacturing the approved product, and a showing

which lists each applicable patent claim and

demonstrates the manner in which at least one such

patent claim reads on:

(i) The approved product, if the listed

claims include any claim to the approved product;

(ii) The method of using the approved

product, if the listed claims include any claim to the

method of using the approved product; and

(iii) The method of manufacturing the

approved product, if the listed claims include any

claim to the method of manufacturing the approved

product;

(10) A statement beginning on a new page

of the relevant dates and information pursuant to 35

U.S.C.156(g) in order to enable the Secretary of

Health and Human Services or the Secretary of

Agriculture, as appropriate, to determine the

applicable regulatory review period as follows:

(i) For a patent claiming a human drug,

antibiotic, or human biological product:

(A) The effective date of the

investigational new drug (IND) application and the

IND number;

(B) The date on which a new drug

application (NDA) or a Product License Application

(PLA) was initially submitted and the NDA or PLA

number; and

approved or the Product License issued;

(ii) For a patent claiming a new animal

drug:

(A) The date a major health or

environmental effects test on the drug was initiated,

and any available substantiation of that date, or the

date of an exemption under subsection (j) of Section

512 of the Federal Food, Drug, and Cosmetic Act

became effective for such animal drug;

(B) The date on which a new animal

drug application (NADA) was initially submitted

and the NADA number; and

was approved;

(iii) For a patent claiming a veterinary

biological product:

(A) The date the authority to prepare

an experimental biological product under the

Virus-Serum-Toxin Act became effective;

(B) The date an application for a

license was submitted under the Virus-Serum-Toxin

Act; and

(iv) For a patent claiming a food or color

additive:

(A) The date a major health or

environmental effects test on the additive was

initiated and any available substantiation of that

date;

(B) The date on which a petition for

product approval under the Federal Food, Drug and

Cosmetic Act was initially submitted and the

petition number; and

published a Federal Register notice listing the

additive for use;

R-226January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.740

(v) For a patent claiming a medical

device:

(A) The effective date of the

investigational device exemption (IDE) and the IDE

number, if applicable, or the date on which the

applicant began the ﬁrst clinical investigation

involving the device, if no IDE was submitted, and

any available substantiation of that date;

(B) The date on which the application

for product approval or notice of completion of a

product development protocol under Section 515 of

the Federal Food, Drug and Cosmetic Act was

initially submitted and the number of the application;

and

was approved or the protocol declared to be

completed;

(11) A brief description beginning on a new

page of the signiﬁcant activities undertaken by the

marketing applicant during the applicable regulatory

review period with respect to the approved product

and the signiﬁcant dates applicable to such activities;

(12) A statement beginning on a new page

that in the opinion of the applicant the patent is

eligible for the extension and a statement as to the

length of extension claimed, including how the

length of extension was determined;

(13) A statement that applicant

acknowledges a duty to disclose to the Director of

the United States Patent and Trademark Ofﬁce and

the Secretary of Health and Human Services or the

Secretary of Agriculture any information which is

material to the determination of entitlement to the

extension sought (see § 1.765);

(14) The prescribed fee for receiving and

acting upon the application for extension (see §

1.20(j)); and

(15) The name, address, and telephone

number of the person to whom inquiries and

correspondence relating to the application for patent

term extension are to be directed.

(b) The application under this section must be

accompanied by two additional copies of such

application (for a total of three copies).

is informal under this section, the Ofﬁce will so

notify the applicant. The applicant has two months

from the mail date of the notice, or such time as is

set in the notice, within which to correct the

informality. Unless the notice indicates otherwise,

this time period may be extended under the

provisions of § 1.136.

[Added 52 FR 9395, Mar. 24, 1987, effective May

26, 1987; para. (a) amended, 54 FR 30375, July 20, 1989,

effective Aug. 22, 1989; para. (a)(14), 56 FR 65142, Dec.

13, 1991, effective Dec. 16, 1991; heading, introductory

text of paragraph (a), and paras. (a)(9), (a)(10), (a)(14),

(a)(15), (b) and (c) revised, 65 FR 54604, Sept. 8, 2000,

effective Sept. 8, 2000; paras. (a)(16) and (a)(17)

removed, 65 FR 54604, Sept. 8, 2000, effective Sept. 8,

2000; paras. (a) & (a)(13) revised, 68 FR 14332, Mar.

25, 2003, effective May 1, 2003]

§ 1.741 Complete application given a ﬁling

date; petition procedure.

(a) The ﬁling date of an application for

extension of a patent term is the date on which a

complete application is received in the Ofﬁce or

ﬁled pursuant to the procedures set forth in §1.8 or

§ 1.10. A complete application must include:

(1) An identiﬁcation of the approved

product;

(2) An identiﬁcation of each Federal statute

under which regulatory review occurred;

(3) An identiﬁcation of the patent for which

an extension is being sought;

(4) An identiﬁcation of each claim of the

patent which claims the approved product or a

method of using or manufacturing the approved

product;

(5) Sufﬁcient information to enable the

Director to determine under subsections (a) and (b)

of 35 U.S.C. 156 the eligibility of a patent for

extension, and the rights that will be derived from

the extension, and information to enable the Director

and the Secretary of Health and Human Services or

the Secretary of Agriculture to determine the length

of the regulatory review period; and

(6) A brief description of the activities

undertaken by the marketing applicant during the

applicable regulatory review period with respect to

the approved product and the signiﬁcant dates

applicable to such activities.

(b) If an application for extension of patent term

is incomplete under this section, the Ofﬁce will so

January 2018R-227

§ 1.741CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

notify the applicant. If applicant requests review of

a notice that an application is incomplete, or review

of the ﬁling date accorded an application under this

section, applicant must ﬁle a petition pursuant to

this paragraph accompanied by the fee set forth in

§ 1.17(f) within two months of the mail date of the

notice that the application is incomplete, or the

notice according the ﬁling date complained of.

Unless the notice indicates otherwise, this time

period may be extended under the provisions of §

1.136.

[Added 52 FR 9396, Mar. 24, 1987, effective May

26, 1987; para. (a) amended, 54 FR 30375, July 20, 1989,

effective Aug. 22, 1989; para. (a) amended, 58 FR 54494,

Oct. 22, 1993, effective Nov. 22, 1993; para. (a)

correcting amendment, 61 FR 64027, Dec. 3, 1996;

heading, introductory text of paragraph (a), and paras.

(a)(5) and (b) revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; para. (a)(5) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003; para. (b) revised,

69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004]

§ 1.750 Determination of eligibility for

extension of patent term.

A determination as to whether a patent is eligible

for extension may be made by the Director solely

on the basis of the representations contained in the

application for extension ﬁled in compliance with

§ 1.740 or § 1.790. This determination may be

delegated to appropriate Patent and Trademark

Ofﬁce ofﬁcials and may be made at any time before

the certiﬁcate of extension is issued. The Director

or other appropriate ofﬁcials may require from

applicant further information or make such

independent inquiries as desired before a ﬁnal

determination is made on whether a patent is eligible

for extension. In an application for extension ﬁled

in compliance with § 1.740, a notice will be mailed

to applicant containing the determination as to the

eligibility of the patent for extension and the period

of time of the extension, if any. This notice shall

constitute the ﬁnal determination as to the eligibility

and any period of extension of the patent. A single

request for reconsideration of a ﬁnal determination

may be made if ﬁled by the applicant within such

time as may be set in the notice of ﬁnal

determination or, if no time is set, within one month

from the date of the ﬁnal determination. The time

periods set forth herein are subject to the provisions

of § 1.136.

[Added 52 FR 9396, Mar. 24, 1987, effective May

26, 1987; revised, 60 FR 25615, May 12, 1995, effective

July 11, 1995; revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

§ 1.760 Interim extension of patent term

under 35 U.S.C. 156(e)(2).

An applicant who has ﬁled a formal application for

extension in compliance with § 1.740 may request

one or more interim extensions for periods of up to

one year each pending a ﬁnal determination on the

application pursuant to § 1.750. Any such request

should be ﬁled at least three months prior to the

expiration date of the patent. The Director may issue

interim extensions, without a request by the

applicant, for periods of up to one year each until a

ﬁnal determination is made. The patent owner or

agent will be notiﬁed when an interim extension is

granted and notice of the extension will be published

in the Ofﬁcial Gazette of the United States Patent

and Trademark Ofﬁce. The notice will be recorded

in the ofﬁcial ﬁle of the patent and will be

considered as part of the original patent. In no event

will the interim extensions granted under this section

be longer than the maximum period for extension

to which the applicant would be eligible.

[Added, 52 FR 9396, Mar. 24, 1987, effective May

26, 1987; heading revised, 60 FR 25615, May 12, 1995,

effective July 11, 1995; revised, 65 FR 54604, Sept. 8,

2000, effective Sept. 8, 2000; revised, 68 FR 14332, Mar.

25, 2003, effective May 1, 2003]

§ 1.765 Duty of disclosure in patent term

extension proceedings.

(a) A duty of candor and good faith toward the

Patent and Trademark Ofﬁce and the Secretary of

Health and Human Services or the Secretary of

Agriculture rests on the patent owner or its agent,

on each attorney or agent who represents the patent

owner and on every other individual who is

substantively involved on behalf of the patent owner

in a patent term extension proceeding. All such

individuals who are aware, or become aware, of

material information adverse to a determination of

entitlement to the extension sought, which has not

been previously made of record in the patent term

extension proceeding must bring such information

to the attention of the Ofﬁce or the Secretary, as

appropriate, in accordance with paragraph (b) of

R-228January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.750

this section, as soon as it is practical to do so after

the individual becomes aware of the information.

Information is material where there is a substantial

likelihood that the Ofﬁce or the Secretary would

consider it important in determinations to be made

in the patent term extension proceeding.

(b) Disclosures pursuant to this section must be

accompanied by a copy of each written document

which is being disclosed. The disclosure must be

made to the Ofﬁce or the Secretary, as appropriate,

unless the disclosure is material to determinations

to be made by both the Ofﬁce and the Secretary, in

which case duplicate copies, certiﬁed as such, must

be ﬁled in the Ofﬁce and with the Secretary.

Disclosures pursuant to this section may be made

to the Ofﬁce or the Secretary, as appropriate,

through an attorney or agent having responsibility

on behalf of the patent owner or its agent for the

patent term extension proceeding or through a patent

owner acting on his or her own behalf. Disclosure

to such an attorney, agent or patent owner shall

satisfy the duty of any other individual. Such an

attorney, agent or patent owner has no duty to

transmit information which is not material to the

determination of entitlement to the extension sought.

extension and no extension will be issued if it is

determined that fraud on the Ofﬁce or the Secretary

was practiced or attempted or the duty of disclosure

was violated through bad faith or gross negligence

in connection with the patent term extension

proceeding. If it is established by clear and

convincing evidence that any fraud was practiced

or attempted on the Ofﬁce or the Secretary in

connection with the patent term extension

proceeding or that there was any violation of the

duty of disclosure through bad faith or gross

negligence in connection with the patent term

extension proceeding, a ﬁnal determination will be

made pursuant to § 1.750 that the patent is not

eligible for extension.

(d) The duty of disclosure pursuant to this

section rests on the individuals identiﬁed in

paragraph (a) of this section and no submission on

behalf of third parties, in the form of protests or

otherwise, will be considered by the Ofﬁce. Any

such submissions by third parties to the Ofﬁce will

be returned to the party making the submission, or

otherwise disposed of, without consideration by the

Ofﬁce.

[Added, 52 FR 9396, Mar. 24 1987, effective May

26, 1987, para. (a) amended, 54 FR 30375, July 20, 1989,

effective Aug. 22, 1989; para. (a) revised, 60 FR 25615,

May 12, 1995, effective July 11, 1995]

§ 1.770 Express withdrawal of application

for extension of patent term.

An application for extension of patent term may be

expressly withdrawn before a determination is made

pursuant to § 1.750 by ﬁling in the Ofﬁce, in

duplicate, a written declaration of withdrawal signed

by the owner of record of the patent or its agent. An

application may not be expressly withdrawn after

the date permitted for reply to the ﬁnal

determination on the application. An express

withdrawal pursuant to this section is effective when

acknowledged in writing by the Ofﬁce. The ﬁling

of an express withdrawal pursuant to this section

and its acceptance by the Ofﬁce does not entitle

applicant to a refund of the ﬁling fee (§ 1.20(j)) or

any portion thereof.

[Added 52 FR 9397, Mar. 24 1987, effective May

26, 1987; 56 FR 65142, Dec. 13, 1991, effective Dec.

16, 1991; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997]

§ 1.775 Calculation of patent term extension

for a human drug, antibiotic drug, or human

biological product.

(a) If a determination is made pursuant to §

1.750 that a patent for a human drug, antibiotic drug

or human biological product is eligible for extension,

the term shall be extended by the time as calculated

in days in the manner indicated by this section. The

patent term extension will run from the original

expiration date of the patent or any earlier date set

by terminal disclaimer (§ 1.321).

(b) The term of the patent for a human drug,

antibiotic drug or human biological product will be

extended by the length of the regulatory review

period for the product as determined by the

Secretary of Health and Human Services, reduced

as appropriate pursuant to paragraphs (d)(1) through

(d)(6) of this section.

for a human drug, antibiotic drug or human

biological product will be determined by the

January 2018R-229

§ 1.775CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Secretary of Health and Human Services. Under 35

U.S.C. 156(g)(1)(B), it is the sum of —

(1) The number of days in the period

beginning on the date an exemption under subsection

(i) of section 505 or subsection (d) of section 507

of the Federal Food, Drug, and Cosmetic Act

became effective for the approved product and

ending on the date the application was initially

submitted for such product under those sections or

under section 351 of the Public Health Service Act;

and

(2) The number of days in the period

beginning on the date the application was initially

submitted for the approved product under section

351 of the Public Health Service Act, subsection (b)

of section 505 or section 507 of the Federal Food,

Drug, and Cosmetic Act and ending on the date such

application was approved under such section.

(d) The term of the patent as extended for a

human drug, antibiotic drug or human biological

product will be determined by—

(1) Subtracting from the number of days

determined by the Secretary of Health and Human

Services to be in the regulatory review period:

(i) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section which

were on and before the date on which the patent

issued;

(ii) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section during

which it is determined under 35 U.S.C. 156(d)(2)(B)

by the Secretary of Health and Human Services that

applicant did not act with due diligence;

(iii) One-half the number of days

remaining in the period deﬁned by paragraph (c)(1)

of this section after that period is reduced in

accordance with paragraphs (d)(1)(i) and (ii) of this

section; half days will be ignored for purposes of

subtraction;

(2) By adding the number of days

determined in paragraph (d)(1) of this section to the

original term of the patent as shortened by any

terminal disclaimer;

(3) By adding 14 years to the date of

approval of the application under section 351 of the

Public Health Service Act, or subsection (b) of

section 505 or section 507 of the Federal Food,

Drug, and Cosmetic Act;

(4) By comparing the dates for the ends of

the periods obtained pursuant to paragraphs (d)(2)

and (d)(3) of this section with each other and

selecting the earlier date;

(5) If the original patent was issued after

September 24, 1984,

(i) By adding 5 years to the original

expiration date of the patent or any earlier date set

by terminal disclaimer; and

(ii) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(5)(i) of this

section with each other and selecting the earlier date;

(6) If the original patent was issued before

September 24, 1984, and

(i) If no request was submitted for an

exemption under subsection (i) of section 505 or

subsection (d) of section 507 of the Federal Food,

Drug, and Cosmetic Act before September 24, 1984,

by—

(A) Adding 5 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer; and

(B) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of

this section with each other and selecting the earlier

date; or

(ii) If a request was submitted for an

exemption under subsection (i) of section 505 or

subsection (d) of section 507 of the Federal Food,

Drug, or Cosmetic Act before September 24, 1984

and the commercial marketing or use of the product

was not approved before September 24, 1984, by -

(A) Adding 2 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer, and

(B) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of

this section with each other and selecting the earlier

date.

[Added, 52 FR 9397, Mar. 24 1987, effective May

26, 1987]

§ 1.776 Calculation of patent term extension

for a food additive or color additive.

(a) If a determination is made pursuant to §

1.750 that a patent for a food additive or color

R-230January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.776

additive is eligible for extension, the term shall be

extended by the time as calculated in days in the

manner indicated by this section. The patent term

extension will run from the original expiration date

of the patent or earlier date set by terminal

disclaimer (§ 1.321).

(b) The term of the patent for a food additive or

color additive will be extended by the length of the

regulatory review period for the product as

determined by the Secretary of Health and Human

Services, reduced as appropriate pursuant to

paragraphs (d)(1) through (d)(6) of this section.

for a food additive or color additive will be

determined by the Secretary of Health and Human

Services. Under 35 U.S.C. 156(g)(2)(B), it is the

sum of -

(1) The number of days in the period

beginning on the date a major health or

environmental effects test on the additive was

initiated and ending on the date a petition was

initially submitted with respect to the approved

product under the Federal Food, Drug, and Cosmetic

Act requesting the issuance of a regulation for use

of the product; and

(2) The number of days in the period

beginning on the date a petition was initially

submitted with respect to the approved product

under the Federal Food, Drug, and Cosmetic Act

requesting the issuance of a regulation for use of

the product, and ending on the date such regulation

became effective or, if objections were ﬁled to such

regulation, ending on the date such objections were

resolved and commercial marketing was permitted

or, if commercial marketing was permitted and later

revoked pending further proceedings as a result of

such objections, ending on the date such proceedings

were ﬁnally resolved and commercial marketing

was permitted.

(d) The term of the patent as extended for a food

additive or color additive will be determined by

(1) Subtracting from the number of days

determined by the Secretary of Health and Human

Services to be in the regulatory review period:

(i) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section which

were on and before the date on which the patent

issued;

(ii) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section during

which it is determined under 35 U.S.C. 156(d)(2)(B)

by the Secretary of Health and Human Services that

applicant did not act with due diligence;

(iii) The number of days equal to

one-half the number of days remaining in the period

deﬁned by paragraph (c)(1) of this section after that

period is reduced in accordance with paragraphs

(d)(1) (i) and (ii) of this section; half days will be

ignored for purposes of subtraction;

(2) By adding the number of days

determined in paragraph (d)(1) of this section to the

original term of the patent as shortened by any

terminal disclaimer;

(3) By adding 14 years to the date a

regulation for use of the product became effective

or, if objections were ﬁled to such regulation, to the

date such objections were resolved and commercial

marketing was permitted or, if commercial

marketing was permitted and later revoked pending

further proceedings as a result of such objections,

to the date such proceedings were ﬁnally resolved

and commercial marketing was permitted;

(4) By comparing the dates for the ends of

the periods obtained pursuant to paragraphs (d)(2)

and (d)(3) of this section with each other and

selecting the earlier date;

(5) If the original patent was issued after

September 24, 1984,

(i) By adding 5 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer; and

(ii) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(5)(i) of this

section with each other and selecting the earlier date;

(6) If the original patent was issued before

September 24, 1984, and

(i) If no major health or environmental

effects test was initiated and no petition for a

regulation or application for registration was

submitted before September 24, 1984, by

(A) Adding 5 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer, and

(B) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of

January 2018R-231

§ 1.776CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

this section with each other and selecting the earlier

date; or

(ii) If a major health or environmental

effects test was initiated or a petition for a regulation

or application for registration was submitted by

September 24, 1984, and the commercial marketing

or use of the product was not approved before

September 24, 1984, by —

(A) Adding 2 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer, and

(B) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of

this section with each other and selecting the earlier

date.

[Added, 52 FR 9397, Mar. 24, 1987, effective May

26, 1987]

§ 1.777 Calculation of patent term extension

for a medical device.

(a) If a determination is made pursuant to §

1.750 that a patent for a medical device is eligible

for extension, the term shall be extended by the time

as calculated in days in the manner indicated by this

section. The patent term extension will run from the

original expiration date of the patent or earlier date

as set by terminal disclaimer (§ 1.321).

(b) The term of the patent for a medical device

will be extended by the length of the regulatory

review period for the product as determined by the

Secretary of Health and Human Services, reduced

as appropriate pursuant to paragraphs (d)(1) through

(d)(6) of this section.

for a medical device will be determined by the

Secretary of Health and Human Services. Under 35

U.S.C. 156(g)(3)(B), it is the sum of

(1) The number of days in the period

beginning on the date a clinical investigation on

humans involving the device was begun and ending

on the date an application was initially submitted

with respect to the device under section 515 of the

Federal Food, Drug, and Cosmetic Act; and

(2) The number of days in the period

beginning on the date the application was initially

submitted with respect to the device under section

515 of the Federal Food, Drug, and Cosmetic Act,

and ending on the date such application was

approved under such Act or the period beginning

on the date a notice of completion of a product

development protocol was initially submitted under

section 515(f)(5) of the Act and ending on the date

the protocol was declared completed under section

515(f)(6) of the Act.

(d) The term of the patent as extended for a

medical device will be determined by —

(1) Subtracting from the number of days

determined by the Secretary of Health and Human

Services to be in the regulatory review period

pursuant to paragraph (c) of this section:

(i) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section which

were on and before the date on which the patent

issued;

(ii) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section during

which it is determined under 35 U.S.C. 156(d)(2)(B)

by the Secretary of Health and Human Services that

applicant did not act with due diligence;

(iii) One-half the number of days

remaining in the period deﬁned by paragraph (c)(1)

of this section after that period is reduced in

accordance with paragraphs (d)(1) (i) and (ii) of this

section; half days will be ignored for purposes of

subtraction;

(2) By adding the number of days

determined in paragraph (d)(1) of this section to the

original term of the patent as shortened by any

terminal disclaimer;

(3) By adding 14 years to the date of

approval of the application under section 515 of the

Federal Food, Drug, and Cosmetic Act or the date

a product development protocol was declared

completed under section 515(f)(6) of the Act;

(4) By comparing the dates for the ends of

the periods obtained pursuant to paragraphs (d)(2)

and (d)(3) of this section with each other and

selecting the earlier date;

(5) If the original patent was issued after

September 24, 1984,

(i) By adding 5 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer; and

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.777

(ii) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(5)(i) of this

section with each other and selecting the earlier date;

(6) If the original patent was issued before

September 24, 1984, and

(i) If no clinical investigation on humans

involving the device was begun or no product

development protocol was submitted under section

515(f)(5) of the Federal Food, Drug, and Cosmetic

Act before September 24, 1984, by —

(A) Adding 5 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer and

(B) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of

this section with each other and selecting the earlier

date; or

(ii) If a clinical investigation on humans

involving the device was begun or a product

development protocol was submitted under section

515(f)(5) of the Federal Food, Drug, and Cosmetic

Act before September 24, 1984 and the commercial

marketing or use of the product was not approved

before September 24, 1984, by

(A) Adding 2 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer, and

(B) By comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of

this section with each other and selecting the earlier

date.

[Added, 52 FR 9398, Mar. 24 1987, effective May

26, 1987]

§ 1.778 Calculation of patent term extension

for an animal drug product.

(a) If a determination is made pursuant to §

1.750 that a patent for an animal drug is eligible for

extension, the term shall be extended by the time as

calculated in days in the manner indicated by this

section. The patent term extension will run from the

original expiration date of the patent or any earlier

date set by terminal disclaimer (§ 1.321).

(b) The term of the patent for an animal drug

will be extended by the length of the regulatory

review period for the drug as determined by the

Secretary of Health and Human Services, reduced

as appropriate pursuant to paragraphs (d)(1) through

(d)(6) of this section.

for an animal drug will be determined by the

Secretary of Health and Human Services. Under 35

U.S.C. 156(g)(4)(B), it is the sum of —

(1) The number of days in the period

beginning on the earlier of the date a major health

or environmental effects test on the drug was

initiated or the date an exemption under subsection

(j) of section 512 of the Federal Food, Drug, and

Cosmetic Act became effective for the approved

animal drug and ending on the date an application

was initially submitted for such animal drug under

section 512 of the Federal Food, Drug, and Cosmetic

Act; and

(2) The number of days in the period

beginning on the date the application was initially

submitted for the approved animal drug under

subsection (b) of section 512 of the Federal Food,

Drug, and Cosmetic Act and ending on the date such

application was approved under such section.

(d) The term of the patent as extended for an

animal drug will be determined by —

(1) Subtracting from the number of days

determined by the Secretary of Health and Human

Services to be in the regulatory review period:

(i) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section that were

on and before the date on which the patent issued;

(ii) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section during

which it is determined under 35 U.S.C. 156(d)(2)(B)

by the Secretary of Health and Human Services that

applicant did not act with due diligence;

(iii) One-half the number of days

remaining in the period deﬁned by paragraph (c)(1)

of this section after that period is reduced in

accordance with paragraphs (d)(1)(i) and (ii) of this

section; half days will be ignored for purposes of

subtraction;

(2) By adding the number of days

determined in paragraph (d)(1) of this section to the

original term of the patent as shortened by any

terminal disclaimer;

January 2018R-233

§ 1.778CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(3) By adding 14 years to the date of

approval of the application under section 512 of the

Federal Food, Drug, and Cosmetic Act;

(4) By comparing the dates for the ends of

the periods obtained pursuant to paragraphs (d)(2)

and (d)(3) of this section with each other and

selecting the earlier date;

(5) If the original patent was issued after

November 16, 1988, by —

(i) Adding 5 years to the original

expiration date of the patent or any earlier date set

by terminal disclaimer; and

(ii) Comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(5)(i) of this

section with each other and selecting the earlier date;

(6) If the original patent was issued before

November 16, 1988, and

(i) If no major health or environmental

effects test on the drug was initiated and no request

was submitted for an exemption under subsection

(j) of section 512 of the Federal Food, Drug, and

Cosmetic Act before November 16, 1988, by —

(A) Adding 5 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer; and

(B) Comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of

this section with each other and selecting the earlier

date; or

(ii) If a major health or environmental

effects test was initiated or a request for an

exemption under subsection (j) of section 512 of the

Federal Food, Drug, and Cosmetic Act was

submitted before November 16, 1988, and the

application for commercial marketing or use of the

animal drug was not approved before November 16,

1988, by —

(A) Adding 3 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer, and

(B) Comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of

this section with each other and selecting the earlier

date.

[Added, 54 FR 30375, July 20, 1989, effective

Aug. 22, 1989]

§ 1.779 Calculation of patent term extension

for a veterinary biological product.

(a) If a determination is made pursuant to §

1.750 that a patent for a veterinary biological

product is eligible for extension, the term shall be

extended by the time as calculated in days in the

manner indicated by this section. The patent term

extension will run from the original expiration date

of the patent or any earlier date set by terminal

disclaimer (§ 1.321).

(b) The term of the patent for a veterinary

biological product will be extended by the length

of the regulatory review period for the product as

determined by the Secretary of Agriculture, reduced

as appropriate pursuant to paragraphs (d)(1) through

(d)(6) of this section.

for a veterinary biological product will be

determined by the Secretary of Agriculture. Under

35 U.S.C. 156(g)(5)(B), it is the sum of —

(1) The number of days in the period

beginning on the date the authority to prepare an

experimental biological product under the

Virus-Serum-Toxin Act became effective and ending

on the date an application for a license was

submitted under the Virus-Serum-Toxin Act; and

(2) The number of days in the period

beginning on the date an application for a license

was initially submitted for approval under the

Virus-Serum-Toxin Act and ending on the date such

license was issued.

(d) The term of the patent as extended for a

veterinary biological product will be determined by

—

(1) Subtracting from the number of days

determined by the Secretary of Agriculture to be in

the regulatory review period:

(i) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section that were

on and before the date on which the patent issued;

(ii) The number of days in the periods of

paragraphs (c)(1) and (c)(2) of this section during

which it is determined under 35 U.S.C. 156(d)(2)(B)

by the Secretary of Agriculture that applicant did

not act with due diligence;

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.779

(iii) One-half the number of days

remaining in the period deﬁned by paragraph (c)(1)

of this section after that period is reduced in

accordance with paragraphs (d)(1)(i) and (ii) of this

section; half days will be ignored for purposes of

subtraction;

(2) By adding the number of days

determined in paragraph (d)(1) of this section to the

original term of the patent as shortened by any

terminal disclaimer;

(3) By adding 14 years to the date of the

issuance of a license under the Virus-Serum-Toxin

Act;

(4) By comparing the dates for the ends of

the periods obtained pursuant to paragraphs (d)(2)

and (d)(3) of this section with each other and

selecting the earlier date;

(5) If the original patent was issued after

November 16, 1988, by —

(i) Adding 5 years to the original

expiration date of the patent or any earlier date set

by terminal disclaimer; and

(ii) Comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(5)(i) of this

section with each other and selecting the earlier date;

(6) If the original patent was issued before

November 16, 1988, and

(i) If no request for the authority to

prepare an experimental biological product under

the Virus-Serum-Toxin Act was submitted before

November 16, 1988, by —

(A) Adding 5 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer; and

(B) Comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of

this section with each other and selecting the earlier

date; or

(ii) If a request for the authority to

prepare an experimental biological product under

the Virus-Serum-Toxin Act was submitted before

November 16, 1988, and the commercial marketing

or use of the product was not approved before

November 16, 1988, by —

(A) Adding 3 years to the original

expiration date of the patent or earlier date set by

terminal disclaimer; and

(B) Comparing the dates obtained

pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of

this section with each other and selecting the earlier

date.

[Added, 54 FR 30375, July 20, 1989, effective

Aug. 22, 1989]

§ 1.780 Certiﬁcate or order of extension of

patent term.

If a determination is made pursuant to § 1.750 that

a patent is eligible for extension and that the term

of the patent is to be extended, a certiﬁcate of

extension, under seal, or an order granting interim

extension under 35 U.S.C. 156(d)(5), will be issued

to the applicant for the extension of the patent term.

Such certiﬁcate or order will be recorded in the

ofﬁcial ﬁle of the patent and will be considered as

part of the original patent. Notiﬁcation of the

issuance of the certiﬁcate or order of extension will

be published in the Ofﬁcial Gazette of the United

States Patent and Trademark Ofﬁce. Notiﬁcation

of the issuance of the order granting an interim

extension under 35 U.S.C. 156(d)(5), including the

identity of the product currently under regulatory

review, will be published in the Ofﬁcial Gazette of

the United States Patent and Trademark Ofﬁce and

in the Federal Register. No certiﬁcate of, or order

granting, an extension will be issued if the term of

the patent cannot be extended, even though the

patent is otherwise determined to be eligible for

extension. In such situations, the ﬁnal determination

made pursuant to § 1.750 will indicate that no

certiﬁcate or order will issue.

[Added, 52 FR 9399, Mar. 24 1987, effective May

26, 1987; para. (a) revised, 60 FR 25615, May 12, 1995,

effective July 11, 1995; revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000]

§ 1.785 Multiple applications for extension

of term of the same patent or of different

patents for the same regulatory review period

for a product.

(a) Only one patent may be extended for a

regulatory review period for any product (§

January 2018R-235

§ 1.785CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

1.720(h)). If more than one application for extension

of the same patent is ﬁled, the certiﬁcate of

extension of patent term, if appropriate, will be

issued based upon the ﬁrst ﬁled application for

extension.

(b) If more than one application for extension

is ﬁled by a single applicant which seeks the

extension of the term of two or more patents based

upon the same regulatory review period, and the

patents are otherwise eligible for extension pursuant

to the requirements of this subpart, in the absence

of an election by the applicant, the certiﬁcate of

extension of patent term, if appropriate, will be

issued upon the application for extension of the

patent term having the earliest date of issuance of

those patents for which extension is sought.

seeks the extension of the term of a patent based

upon the same regulatory review period as that relied

upon in one or more applications for extension

pursuant to the requirements of this subpart, the

certiﬁcate of extension of patent term will be issued

on the application only if the patent owner or its

agent is the holder of the regulatory approval granted

with respect to the regulatory review period.

(d) An application for extension shall be

considered complete and formal regardless of

whether it contains the identiﬁcation of the holder

of the regulatory approval granted with respect to

the regulatory review period. When an application

contains such information, or is amended to contain

such information, it will be considered in

determining whether an application is eligible for

an extension under this section. A request may be

made of any applicant to supply such information

within a non-extendable period of not less than one

month whenever multiple applications for extension

of more than one patent are received and rely upon

the same regulatory review period. Failure to

provide such information within the period for reply

set shall be regarded as conclusively establishing

that the applicant is not the holder of the regulatory

approval.

(e) Determinations made under this section shall

be included in the notice of ﬁnal determination of

eligibility for extension of the patent term pursuant

to § 1.750 and shall be regarded as part of that

determination.

[Added, 52 FR 9399, Mar. 24 1987, effective May

26, 1987; para. (b) amended, 54 FR 30375, July 20, 1989,

effective Aug. 22, 1989; revised, 60 FR 25615, May 12,

1995, effective July 11, 1995; para. (d) revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997]

§ 1.790 Interim extension of patent term

under 35 U.S.C. 156(d)(5).

(a) An owner of record of a patent or its agent

who reasonably expects that the applicable

regulatory review period described in paragraph

(1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or

(5)(B)(ii) of subsection (g) that began for a product

that is the subject of such patent may extend beyond

the expiration of the patent term in effect may

submit one or more applications for interim

extensions for periods of up to one year each. The

initial application for interim extension must be ﬁled

during the period beginning 6 months and ending

15 days before the patent term is due to expire. Each

subsequent application for interim extension must

be ﬁled during the period beginning 60 days before

and ending 30 days before the expiration of the

preceding interim extension. In no event will the

interim extensions granted under this section be

longer than the maximum period of extension to

which the applicant would be entitled under 35

U.S.C. 156(c).

(b) A complete application for interim extension

under this section shall include all of the information

required for a formal application under § 1.740 and

a complete application under § 1.741. Sections

(a)(1), (a)(2), (a)(4), and (a)(6) - (a)(17) of § 1.740

and § 1.741 shall be read in the context of a product

currently undergoing regulatory review. Sections

(a)(3) and (a)(5) of § 1.740 are not applicable to an

application for interim extension under this section.

extension application may be limited to a request

for a subsequent interim extension along with a

statement that the regulatory review period has not

been completed along with any materials or

information required under §§ 1.740 and 1.741 that

are not present in the preceding interim extension

application.

[Added, 60 FR 25615, May 12, 1995, effective

July 11, 1995]

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.790

§ 1.791 Termination of interim extension

granted prior to regulatory approval of a

product for commercial marketing or use.

Any interim extension granted under 35 U.S.C.

156(d)(5) terminates at the end of the 60-day period

beginning on the date on which the product involved

receives permission for commercial marketing or

use. If within that 60-day period the patent owner

or its agent ﬁles an application for extension under

§§ 1.740 and 1.741 including any additional

information required under 35 U.S.C. 156(d)(1) not

contained in the application for interim extension,

the patent shall be further extended in accordance

with the provisions of 35 U.S.C. 156.

[Added, 60 FR 25615, May 12, 1995, effective

July 11, 1995]

Subpart G — Biotechnology Invention

Disclosures

DEPOSIT OF BIOLOGICAL MATERIAL

§ 1.801 Biological material.

For the purposes of these regulations pertaining to

the deposit of biological material for purposes of

patents for inventions under 35 U.S.C. 101, the term

biological material shall include material that is

capable of self-replication either directly or

indirectly. Representative examples include bacteria,

fungi including yeast, algae, protozoa, eukaryotic

cells, cell lines, hybridomas, plasmids, viruses, plant

tissue cells, lichens and seeds. Viruses, vectors, cell

organelles and other non-living material existing in

and reproducible from a living cell may be deposited

by deposit of the host cell capable of reproducing

the non-living material.

[Added, 54 FR 34880, Aug. 22, 1989, effective

Jan. 1, 1990]

§ 1.802 Need or opportunity to make a

deposit.

(a) Where an invention is, or relies on, a

biological material, the disclosure may include

reference to a deposit of such biological material.

(b) Biological material need not be deposited

unless access to such material is necessary for the

satisfaction of the statutory requirements for

patentability under 35 U.S.C. 112. If a deposit is

necessary, it shall be acceptable if made in

accordance with these regulations. Biological

material need not be deposited, inter alia, if it is

known and readily avaliable [sic] to the public or

can be made or isolated without undue

experimentation. Once deposited in a depository

complying with these regulations, a biological

material will be considered to be readily available

even though some requirement of law or regulation

of the United States or of the country in which the

depository institution is located permits access to

the material only under conditions imposed for

safety, public health or similar reasons.

speciﬁcation disclosure or the actual deposit of such

material by an applicant or patent owner does not

create any presumption that such material is

necessary to satisfy 35 U.S.C. 112 or that deposit

in accordance with these regulations is or was

required.

[Added, 54 FR 34880, Aug. 22, 1989, effective

Jan. 1, 1990]

§ 1.803 Acceptable depository.

(a) A deposit shall be recognized for the

purposes of these regulations if made in

(1) Any International Depositary Authority

(IDA) as established under the Budapest Treaty on

the International Recognition of the Deposit of

Microorganisms for the Purposes of Patent

Procedure, or

(2) Any other depository recognized to be

suitable by the Ofﬁce. Suitability will be determined

by the Director on the basis of the administrative

and technical competence, and agreement of the

depository to comply with the terms and conditions

applicable to deposits for patent purposes. The

Director may seek the advice of impartial

consultants on the suitability of a depository. The

depository must:

(i) Have a continuous existence;

(ii) Exist independent of the control of

the depositor;

January 2018R-237

§ 1.803CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(iii) Possess the staff and facilities

sufﬁcient to examine the viability of a deposit and

store the deposit in a manner which ensures that it

is kept viable and uncontaminated;

(iv) Provide for sufﬁcient safety

measures to minimize the risk of losing biological

material deposited with it;

(v) Be impartial and objective;

(vi) Furnish samples of the deposited

material in an expeditious and proper manner; and

(vii) Promptly notify depositors of its

inability to furnish samples, and the reasons why.

(b) A depository seeking status under paragraph

(a)(2) of this section must direct a communication

to the Director which shall:

(1) Indicate the name and address of the

depository to which the communication relates;

(2) Contain detailed information as to the

capacity of the depository to comply with the

requirements of paragraph (a)(2) of this section,

including information on its legal status, scientiﬁc

standing, staff and facilities;

(3) Indicate that the depository intends to be

available, for the purposes of deposit, to any

depositor under these same conditions;

(4) Where the depository intends to accept

for deposit only certain kinds of biological material,

specify such kinds;

(5) Indicate the amount of any fees that the

depository will, upon acquiring the status of suitable

depository under paragraph (a)(2) of this section,

charge for storage, viability statements and

furnishings of samples of the deposit.

(a)(2) of this section limited to certain kinds of

biological material may extend such status to

additional kinds of biological material by directing

a communication to the Director in accordance with

paragraph (b) of this section. If a previous

communication under paragraph (b) of this section

is of record, items in common with the previous

communication may be incorporated by reference.

(d) Once a depository is recognized to be

suitable by the Director or has defaulted or

discontinued its performance under this section,

notice thereof will be published in the Ofﬁce Gazette

of the Patent and Trademark Ofﬁce.

[Added, 54 FR 34881, Aug. 22, 1989, effective

Jan. 1, 199; paras. (a)(2) & (b)-(d) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003]

§ 1.804 Time of making an original deposit.

(a) Whenever a biological material is

speciﬁcally identiﬁed in an application for patent

as ﬁled, an original deposit thereof may be made at

any time before ﬁling the application for patent or,

subject to § 1.809, during pendency of the

application for patent.

(b) When the original deposit is made after the

effective ﬁling date of an application for patent, the

applicant must promptly submit a statement from a

person in a position to corroborate the fact, stating

that the biological material which is deposited is a

biological material speciﬁcally identiﬁed in the

application as ﬁled.

[Added, 54 FR 34881, Aug. 22, 1989, effective

Jan. 1, 1990; para. (b) revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

§ 1.805 Replacement or supplement of

deposit.

(a) A depositor, after receiving notice during

the pendency of an application for patent,

application for reissue patent or reexamination

proceeding, that the depository possessing a deposit

either cannot furnish samples thereof or can furnish

samples thereof but the deposit has become

contaminated or has lost its capability to function

as described in the speciﬁcation, shall notify the

Ofﬁce in writing, in each application for patent or

patent affected. In such a case, or where the Ofﬁce

otherwise learns, during the pendency of an

application for patent, application for reissue patent

or reexamination proceeding, that the depository

possessing a deposit either cannot furnish samples

thereof or can furnish samples thereof but the

deposit has become contaminated or has lost its

capability to function as described in the

speciﬁcation, the need for making a replacement or

supplemental deposit will be governed by the same

considerations governing the need for making an

original deposit under the provisions set forth in §

1.802(b). A replacement or supplemental deposit

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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.804

made during the pendency of an application for

patent shall not be accepted unless it meets the

requirements for making an original deposit under

these regulations, including the requirement set forth

under§ 1.804(b). A replacement or supplemental

deposit made in connection with a patent, whether

or not made during the pendency of an application

for reissue patent or a reexamination proceeding or

both, shall not be accepted unless a certiﬁcate of

correction under § 1.323 is requested by the patent

owner which meets the terms of paragraphs (b) and

(b) A request for certiﬁcate of correction under

this section shall not be granted unless the certiﬁcate

identiﬁes:

(1) The accession number for the

replacement or supplemental deposit;

(2) The date of the deposit; and

(3) The name and address of the depository.

this section shall not be granted unless the request

is made promptly after the replacement or

supplemental deposit has been made and the request:

(1) Includes a statement of the reason for

making the replacement or supplemental deposit;

(2) Includes a statement from a person in a

position to corroborate the fact, and stating that the

replacement or supplemental deposit is of a

biological material which is identical to that

originally deposited;

(3) Includes a showing that the patent owner

acted diligently —

(i) In the case of a replacement deposit,

in making the deposit after receiving notice that

samples could no longer be furnished from an earlier

deposit; or

(ii) In the case of a supplemental deposit,

in making the deposit after receiving notice that the

earlier deposit had become contaminated or had lost

its capability to function as described in the

speciﬁcation;

(4) Includes a statement that the term of the

replacement or supplemental deposit expires no

earlier than the term of the deposit being replaced

or supplemented; and

(5) Otherwise establishes compliance with

these regulations.

(d) A depositor’s failure to replace a deposit, or

in the case of a patent, to diligently replace a deposit

and promptly thereafter request a certiﬁcate of

correction which meets the terms of paragraphs (b)

and (c) of this section, after being notiﬁed that the

depository possessing the deposit cannot furnish

samples thereof, shall cause the application or patent

involved to be treated in any Ofﬁce proceeding as

if no deposit were made.

(e) In the event a deposit is replaced according

to these regulations, the Ofﬁce will apply a

rebuttable presumption of identity between the

original and the replacement deposit where a patent

making reference to the deposit is relied upon during

any Ofﬁce proceeeding [sic].

(f) A replacement or supplemental deposit made

during the pendency of an application for patent

may be made for any reason.

(g) In no case is a replacement or supplement

[sic] deposit of a biological material necessary where

the biological material, in accordance with §

1.802(b), need not be deposited.

(h) No replacement deposit of a biological

material is necessary where a depository can furnish

samples thereof but the depository for national

security, health or environmental safety reasons is

unable to provide samples to requesters outside of

the jurisdiction where the depository is located.

(i) The Ofﬁce will not recognize in any Ofﬁce

proceeding a replacement deposit of a biological

material made by a patent owner where the

depository could furnish samples of the deposit

being replaced.

[Added, 54 FR 34881, Aug. 22, 1989, effective

Jan. 1, 1990; para. (c) revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

§ 1.806 Term of deposit.

A deposit made before or during pendency of an

application for patent shall be made for a term of at

least thirty (30) years and at least ﬁve (5) years after

the most recent request for the furnishing of a

sample of the deposit was received by the

depository. In any case, samples must be stored

under agreements that would make them available

January 2018R-239

§ 1.806CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

beyond the enforceable life of the patent for which

the deposit was made.

[Added, 54 FR 34882, Aug. 22, 1989, effective

Jan. 1, 1990]

§ 1.807 Viability of deposit.

(a) A deposit of biological material that is

capable of self-replication either directly or

indirectly must be viable at the time of deposit and

during the term of deposit. Viability may be tested

by the depository. The test must conclude only that

the deposited material is capable of reproduction.

No evidence is necessarily required regarding the

ability of the deposited material to perform any

function described in the patent application.

(b) A viability statement for each deposit of a

biological material deﬁned in paragraph (a) of this

section not made under the Budapest Treaty on the

International Recognition of the Deposit of

Microorganisms for the Purposes of Patent

Procedure must be ﬁled in the application and must

contain:

(1) The name and address of the depository;

(2) The name and address of the depositor;

(3) The date of deposit;

(4) The identity of the deposit and the

accession number given by the depository;

(5) The date of the viability test;

(6) The procedures used to obtain a sample

if the test is not done by the depository; and

(7) A statement that the deposit is capable

of reproduction.

is not viable upon receipt, or the examiner cannot,

for scientiﬁc or other valid reasons, accept the

statement of viability received from the applicant,

the examiner shall proceed as if no deposit has been

made. The examiner will accept the conclusion set

forth in a viability statement issued by a depository

recognized under § 1.803(a).

[Added, 54 FR 34882, Aug. 22, 1989, effective

Jan. 1, 1990]

§ 1.808 Furnishing of samples.

(a) A deposit must be made under conditions

that assure that:

(1) Access to the deposit will be available

during pendency of the patent application making

reference to the deposit to one determined by the

Director to be entitled thereto under § 1.14 and 35

U.S.C. 122, and

(2) Subject to paragraph (b) of this section,

all restrictions imposed by the depositor on the

availability to the public of the deposited material

will be irrevocably removed upon the granting of

the patent.

(b) The depositor may contract with the

depository to require that samples of a deposited

biological material shall be furnished only if a

request for a sample, during the term of the patent:

(1) Is in writing or other tangible form and

dated;

(2) Contains the name and address of the

requesting party and the accession number of the

deposit; and

(3) Is communicated in writing by the

depository to the depositor along with the date on

which the sample was furnished and the name and

address of the party to whom the sample was

furnished.

will certify whether a deposit has been stated to have

been made under conditions which make it available

to the public as of the issue date of the patent grant

provided the request contains:

(1) The name and address of the depository;

(2) The accession number given to the

deposit;

(3) The patent number and issue date of the

patent referring to the deposit; and

(4) The name and address of the requesting

party.

[Added, 54 FR 34882, Aug. 22, 1989, effective

Jan. 1, 199; para. (a)(1) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003]

R-240January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.807

§ 1.809 Examination procedures.

(a) The examiner shall determine pursuant to §

1.104 in each application for patent, application for

reissue patent or reexamination proceeding if a

deposit is needed, and if needed, if a deposit actually

made is acceptable for patent purposes. If a deposit

is needed and has not been made or replaced or

supplemented in accordance with these regulations,

the examiner, where appropriate, shall reject the

affected claims under the appropriate provision of

35 U.S.C. 112, explaining why a deposit is needed

and/or why a deposit actually made cannot be

accepted.

(b) The applicant for patent or patent owner

shall reply to a rejection under paragraph (a) of this

section by—

(1) In the case of an applicant for patent,

either making an acceptable original, replacement,

or supplemental deposit, or assuring the Ofﬁce in

writing that an acceptable deposit will be made; or,

in the case of a patent owner, requesting a certiﬁcate

of correction of the patent which meets the terms of

paragraphs (b) and (c) of § 1.805, or

(2) Arguing why a deposit is not needed

under the circumstances of the application or patent

considered and/or why a deposit actually made

should be accepted. Other replies to the examiner’s

action shall be considered nonresponsive. The

rejection will be repeated until either paragraph

(b)(1) of this section is satisﬁed or the examiner is

convinced that a deposit is not needed.

condition for allowance except for a needed deposit

and the Ofﬁce has received a written assurance that

an acceptable deposit will be made, the Ofﬁce may

notify the applicant in a notice of allowability and

set a three-month period of time from the mailing

date of the notice of allowability within which the

deposit must be made in order to avoid

abandonment. This time period is not extendable

under § 1.136 (see § 1.136(c)).

(d) For each deposit made pursuant to these

regulations, the speciﬁcation shall contain:

(1) The accession number for the deposit;

(2) The date of the deposit;

(3) A description of the deposited biological

material sufﬁcient to speciﬁcally identify it and to

permit examination; and

(4) The name and address of the depository.

(e) Any amendment required by paragraphs

(d)(1), (d)(2) or (d)(4) of this section must be ﬁled

before or with the payment of the issue fee (see §

1.312).

[Added, 54 FR 34882, Aug. 22, 1989, effective

Jan. 1, 1990; paras. (b) and (c) revised and para. (e)

added, 66 FR 21092, Apr. 27, 2001, effective May 29,

2001; para. (c) revised, 78 FR 62368, Oct. 21, 2013,

effective Dec. 18, 2013]

APPLICATION DISCLOSURES

CONTAINING NUCLEOTIDE AND/OR

AMINO ACID SEQUENCES

§ 1.821 Nucleotide and/or amino acid

sequence disclosures in patent applications.

(a) Nucleotide and/or amino acid sequences as

used in §§ 1.821 through 1.825 are interpreted to

mean an unbranched sequence of four or more

amino acids or an unbranched sequence of ten or

more nucleotides. Branched sequences are

speciﬁcally excluded from this deﬁnition. Sequences

with fewer than four speciﬁcally deﬁned nucleotides

or amino acids are speciﬁcally excluded from this

section. “Speciﬁcally deﬁned” means those amino

acids other than “Xaa” and those nucleotide bases

other than “n” deﬁned in accordance with the World

Intellectual Property Organization (WIPO)

Handbook on Industrial Property Information and

Documentation, Standard ST.25: Standard for the

Presentation of Nucleotide and Amino Acid

Sequence Listings in Patent Applications (1998),

including Tables 1 through 6 in Appendix 2, herein

incorporated by reference. (Hereinafter “WIPO

Standard ST.25 (1998)”). This incorporation by

reference was approved by the Director of the

Federal Register in accordance with 5 U.S.C. 552(a)

and 1 CFR part 51. Copies of WIPO Standard ST.25

(1998) may be obtained from the World Intellectual

Property Organization; 34 chemin des Colombettes;

1211 Geneva 20 Switzerland. Copies may also be

inspected at the National Archives and Records

Administration (NARA). For information on the

availability of this material at NARA, call

202-741-6030, or go to:

January 2018R-241

§ 1.821CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

http://www.archives.gov/federal_register/

code_of_federal_regulations/ ibr_locations.html.

Nucleotides and amino acids are further deﬁned as

follows:

(1) Nucleotides: Nucleotides are intended

to embrace only those nucleotides that can be

represented using the symbols set forth in WIPO

Standard ST.25 (1998), Appendix 2, Table 1.

Modiﬁcations, e.g., methylated bases, may be

described as set forth in WIPO Standard ST.25

(1998), Appendix 2, Table 2, but shall not be shown

explicitly in the nucleotide sequence.

(2) Amino acids: Amino acids are those

L-amino acids commonly found in naturally

occurring proteins and are listed in WIPO Standard

ST.25 (1998), Appendix 2, Table 3. Those amino

acid sequences containing D-amino acids are not

intended to be embraced by this deﬁnition. Any

amino acid sequence that contains

post-translationally modiﬁed amino acids may be

described as the amino acid sequence that is initially

translated using the symbols shown in WIPO

Standard ST.25 (1998), Appendix 2, Table 3 with

the modiﬁed positions; e.g., hydroxylations or

glycosylations, being described as set forth in WIPO

Standard ST.25 (1998), Appendix 2, Table 4, but

these modiﬁcations shall not be shown explicitly in

the amino acid sequence. Any peptide or protein

that can be expressed as a sequence using the

symbols in WIPO Standard ST.25 (1998), Appendix

2, Table 3 in conjunction with a description in the

Feature section to describe, for example, modiﬁed

linkages, cross links and end caps, non-peptidyl

bonds, etc., is embraced by this deﬁnition.

(b) Patent applications which contain disclosures

of nucleotide and/or amino acid sequences, in

accordance with the deﬁnition in paragraph (a) of

this section, shall, with regard to the manner in

which the nucleotide and/or amino acid sequences

are presented and described, conform exclusively

to the requirements of §§ 1.821 through 1.825.

of nucleotide and/or amino acid sequences must

contain, as a separate part of the disclosure, a paper

or compact disc copy (see § 1.52(e)) disclosing the

nucleotide and/or amino acid sequences and

associated information using the symbols and format

in accordance with the requirements of §§ 1.822

and 1.823. This paper or compact disc copy is

referred to elsewhere in this subpart as the

“Sequence Listing.” Each sequence disclosed must

appear separately in the “Sequence Listing.” Each

sequence set forth in the “Sequence Listing” must

be assigned a separate sequence identiﬁer. The

sequence identiﬁers must begin with 1 and increase

sequentially by integers. If no sequence is present

for a sequence identiﬁer, the code “000” must be

used in place of the sequence. The response for the

numeric identiﬁer <160> must include the total

number of SEQ ID NOs, whether followed by a

sequence or by the code “000.”

(d) Where the description or claims of a patent

application discuss a sequence that is set forth in

the “Sequence Listing” in accordance with

paragraph (c) of this section, reference must be made

to the sequence by use of the sequence identiﬁer,

preceded by “SEQ ID NO:” in the text of the

description or claims, even if the sequence is also

embedded in the text of the description or claims of

the patent application.

(e) A copy of the “Sequence Listing” referred

to in paragraph (c) of this section must also be

submitted in computer readable form (CRF) in

accordance with the requirements of § 1.824. The

computer readable form must be a copy of the

“Sequence Listing” and may not be retained as a

part of the patent application ﬁle. If the computer

readable form of a new application is to be identical

with the computer readable form of another

application of the applicant on ﬁle in the Ofﬁce,

reference may be made to the other application and

computer readable form in lieu of ﬁling a duplicate

computer readable form in the new application if

the computer readable form in the other application

was compliant with all of the requirements of this

subpart. The new application must be accompanied

by a letter making such reference to the other

application and computer readable form, both of

which shall be completely identiﬁed. In the new

application, applicant must also request the use of

the compliant computer readable “Sequence Listing”

that is already on ﬁle for the other application and

must state that the paper or compact disc copy of

the “Sequence Listing” in the new application is

identical to the computer readable copy ﬁled for the

other application.

(f) In addition to the paper or compact disc copy

required by paragraph (c) of this section and the

computer readable form required by paragraph (e)

R-242January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.821

of this section, a statement that the “Sequence

Listing” content of the paper or compact disc copy

and the computer readable copy are the same must

be submitted with the computer readable form, e.g.,

a statement that “the sequence listing information

recorded in computer readable form is identical to

the written (on paper or compact disc) sequence

listing.”

(g) If any of the requirements of paragraphs (b)

through (f) of this section are not satisﬁed at the

time of ﬁling under 35 U.S.C. 111(a) or at the time

of entering the national stage under 35 U.S.C. 371,

applicant will be notiﬁed and given a period of time

within which to comply with such requirements in

order to prevent abandonment of the application.

Any submission in reply to a requirement under this

paragraph must be accompanied by a statement that

the submission includes no new matter.

(h) If any of the requirements of paragraphs (b)

through (f) of this section are not satisﬁed at the

time of ﬁling an international application under the

Patent Cooperation Treaty (PCT), which application

is to be searched by the United States International

Searching Authority or examined by the United

States International Preliminary Examining

Authority, applicant will be sent a notice

necessitating compliance with the requirements

within a prescribed time period. Any submission in

reply to a requirement under this paragraph must be

accompanied by a statement that the submission

does not include matter which goes beyond the

disclosure in the international application as ﬁled.

If applicant fails to timely provide the required

computer readable form, the United States

International Searching Authority shall search only

to the extent that a meaningful search can be

performed without the computer readable form and

the United States International Preliminary

Examining Authority shall examine only to the

extent that a meaningful examination can be

performed without the computer readable form.

[Added, 55 FR 18230, May 1, 1990, effective Oct.

1, 1990; para. (h) amended, 58 FR 9335, Jan. 14, 1993,

effective May 1, 1993; revised, 63 FR 29620, June 1,

1998, effective July 1, 1998; paras. (c), (e), and (f)

revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8,

2000 (effective date corrected, 65 FR 78958, Dec. 18,

2000); para. (a) revised, 70 FR 10488, Mar. 4, 2005,

effective Mar. 4, 2005]

§ 1.822 Symbols and format to be used for

nucleotide and/or amino acid sequence data.

(a) The symbols and format to be used for

nucleotide and/or amino acid sequence data shall

conform to the requirements of paragraphs (b)

through (e) of this section.

(b) The code for representing the nucleotide

and/or amino acid sequence characters shall conform

to the code set forth in the tables in WIPO Standard

ST.25 (1998), Appendix 2, Tables 1 and 3. This

incorporation by reference was approved by the

Director of the Federal Register in accordance with

5 U.S.C. 552(a) and 1 CFR part 51. Copies of ST.25

may be obtained from the World Intellectual

Property Organization; 34 chemin des Colombettes;

1211 Geneva 20 Switzerland. Copies may also be

inspected at the National Archives and Records

Administration (NARA). For information on the

availability of this material at NARA, call

202-741-6030, or go to:

http://www.archives.gov/federal_register/

code_of_federal_regulations/ ibr_locations.html.

No code other than that speciﬁed in these sections

shall be used in nucleotide and amino acid

sequences. A modiﬁed base or modiﬁed or unusual

amino acid may be presented in a given sequence

as the corresponding unmodiﬁed base or amino acid

if the modiﬁed base or modiﬁed or unusual amino

acid is one of those listed in WIPO Standard ST.25

(1998), Appendix 2, Tables 2 and 4, and the

modiﬁcation is also set forth in the Feature section.

Otherwise, each occurrence of a base or amino acid

not appearing in WIPO Standard ST.25 (1998),

Appendix 2, Tables 1 and 3, shall be listed in a given

sequence as “n” or “Xaa,” respectively, with further

information, as appropriate, given in the Feature

section, preferably by including one or more feature

keys listed in WIPO Standard ST.25 (1998),

Appendix 2, Tables 5 and 6.

(1) A nucleotide sequence shall be listed

using the lower-case letter for representing the

one-letter code for the nucleotide bases set forth in

WIPO Standard ST.25 (1998), Appendix 2, Table

(2) The bases in a nucleotide sequence

(including introns) shall be listed in groups of 10

bases except in the coding parts of the sequence.

January 2018R-243

§ 1.822CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Leftover bases, fewer than 10 in number, at the end

of noncoding parts of a sequence shall be grouped

together and separated from adjacent groups of 10

or 3 bases by a space.

(3) The bases in the coding parts of a

nucleotide sequence shall be listed as triplets

(codons). The amino acids corresponding to the

codons in the coding parts of a nucleotide sequence

shall be typed immediately below the corresponding

codons. Where a codon spans an intron, the amino

acid symbol shall be typed below the portion of the

codon containing two nucleotides.

(4) A nucleotide sequence shall be listed

with a maximum of 16 codons or 60 bases per line,

with a space provided between each codon or group

of 10 bases.

(5) A nucleotide sequence shall be presented,

only by a single strand, in the 5 to 3 direction, from

left to right.

(6) The enumeration of nucleotide bases

shall start at the ﬁrst base of the sequence with

number 1. The enumeration shall be continuous

through the whole sequence in the direction 5 to 3.

The enumeration shall be marked in the right

margin, next to the line containing the one-letter

codes for the bases, and giving the number of the

last base of that line.

(7) For those nucleotide sequences that are

circular in conﬁguration, the enumeration method

set forth in paragraph (c)(6) of this section remains

applicable with the exception that the designation

of the ﬁrst base of the nucleotide sequence may be

made at the option of the applicant.

(d) Representation of amino acids.

(1) The amino acids in a protein or peptide

sequence shall be listed using the three-letter

abbreviation with the ﬁrst letter as an upper case

character, as in WIPO Standard ST.25 (1998),

Appendix 2, Table 3.

(2) A protein or peptide sequence shall be

listed with a maximum of 16 amino acids per line,

with a space provided between each amino acid.

(3) An amino acid sequence shall be

presented in the amino to carboxy direction, from

left to right, and the amino and carboxy groups shall

not be presented in the sequence.

(4) The enumeration of amino acids may

start at the ﬁrst amino acid of the ﬁrst mature

protein, with the number 1. When presented, the

amino acids preceding the mature protein, e.g.,

pre-sequences, pro-sequences, pre-pro-sequences

and signal sequences, shall have negative numbers,

counting backwards starting with the amino acid

next to number 1. Otherwise, the enumeration of

amino acids shall start at the ﬁrst amino acid at the

amino terminal as number 1. It shall be marked

below the sequence every 5 amino acids. The

enumeration method for amino acid sequences that

is set forth in this section remains applicable for

amino acid sequences that are circular in

conﬁguration, with the exception that the

designation of the ﬁrst amino acid of the sequence

may be made at the option of the applicant.

(5) An amino acid sequence that contains

internal terminator symbols (e.g., “Ter”, “*”, or “.”,

etc.) may not be represented as a single amino acid

sequence, but shall be presented as separate amino

acid sequences.

(e) A sequence with a gap or gaps shall be

presented as a plurality of separate sequences, with

separate sequence identiﬁers, with the number of

separate sequences being equal in number to the

number of continuous strings of sequence data. A

sequence that is made up of one or more

noncontiguous segments of a larger sequence or

segments from different sequences shall be

presented as a separate sequence.

[Added, 55 FR 18230, May 1, 1990, effective Oct.

1, 1990; revised, 63 FR 29620, June 1, 1998, effective,

July 1, 1998; para. (b) revised, 70 FR 10488, Mar. 4,

2005, effective Mar. 4, 2005]

§ 1.823 Requirements for nucleotide and/or

amino acid sequences as part of the

application.

(a)(1) If the “Sequence Listing” required by

§ 1.821(c) is submitted on paper: The “Sequence

Listing,” setting forth the nucleotide and/or amino

acid sequence and associated information in

accordance with paragraph (b) of this section, must

begin on a new page and must be titled “Sequence

Listing.” The pages of the “Sequence Listing”

preferably should be numbered independently of

the numbering of the remainder of the application.

Each page of the “Sequence Listing” shall contain

R-244January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.823

no more than 66 lines and each line shall contain no

more than 72 characters. The sheet or sheets

presenting a sequence listing may not include

material other than part of the sequence listing. A

ﬁxed-width font should be used exclusively

throughout the “Sequence Listing.”

(2) If the “Sequence Listing” required by §

1.821(c) is submitted on compact disc: The

“Sequence Listing” must be submitted on a compact

disc in compliance with § 1.52(e). The compact disc

may also contain table information if the application

contains table information that may be submitted

on a compact disc (§ 1.52(e)(1)(iii)). The

speciﬁcation must contain an

incorporation-by-reference of the Sequence Listing

as required by § 1.52(e)(5). The presentation of the

“Sequence Listing” and other materials on compact

disc under § 1.821(c) does not substitute for the

Computer Readable Form that must be submitted

on disk, compact disc, or tape in accordance with §

1.824.

(b) The “Sequence Listing” shall, except as

otherwise indicated, include the actual nucleotide

and/or amino acid sequence, the numeric identiﬁers

and their accompanying information as shown in

the following table. The numeric identiﬁer shall be

used only in the “Sequence Listing.” The order and

presentation of the items of information in the

“Sequence Listing” shall conform to the

arrangement given below. Each item of information

shall begin on a new line and shall begin with the

numeric identiﬁer enclosed in angle brackets as

shown. The submission of those items of

information designated with an “M” is mandatory.

The submission of those items of information

designated with an “O” is optional. Numeric

identiﬁers <110> through <170> shall only be set

forth at the beginning of the “Sequence Listing.”

The following table illustrates the numeric

identiﬁers.

Mandatory (M) or Optional (O)Comments and formatDeﬁnitionNumeric

Identiﬁer

M.Preferably max. of 10 names; one

name per line; preferable format:

Surname, Other Names and/or Initials.

Applicant......................<110>

M..............................................................Title of Invention..........<120>

M when ﬁled prior to assignment or

appl. number

Personal ﬁle reference.........................File Reference...............<130>

M, if available.Specify as: US 07/999,999 or

PCT/US96/99999.

Current Application

Number.

<140>

M, if available.Specify as: yyyy-mm-dd......................Current Filing Date.......<141>

M, if applicable include priority

documents under 35 U.S.C. 119 and

120

Specify as: US 07/999,999 or

PCT/US96/99999.

Prior Application

Number.

<150>

M, if applicableSpecify as: yyyy-mm-dd .....................Prior Application Filing

Date.

<151>

M.Count includes total number of SEQ

ID NOs.................................................

Number of SEQ ID

NOs.

<160>

O.Name of software used to create the

Sequence Listing.

Software.......................<170>

M.Response shall be an integer

representing the SEQ ID NO shown.

SEQ ID NO:#:..............<210>

M.Respond with an integer expressing

the number of bases or amino acid

residues.

Length...........................<211>

January 2018R-245

§ 1.823CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Mandatory (M) or Optional (O)Comments and formatDeﬁnitionNumeric

Identiﬁer

M.Whether presented sequence molecule

is DNA, RNA, or PRT (protein). If a

Type..............................<212>

nucleotide sequence contains both

DNA and RNA fragments, the type

shall be “DNA.” In addition, the

combined DNA/ RNA molecule shall

be further described in the <220> to

<223> feature section.

M.Scientiﬁc name, i.e. Genus/ species,

Unknown or Artiﬁcial Sequence. In

Organism......................<213>

addition, the “Unknown” or “Artiﬁcial

Sequence” organisms shall be further

described in the <220> to <223>

feature section.

M, under the following conditions: if

“n,” “Xaa,” or a modiﬁed or unusual

Leave blank after <220>. <221-223>

provide for a description of points of

Feature..........................<220>

L-amino acid or modiﬁed base wasbiological signiﬁcance in the

sequence. used in a sequence; if ORGANISM is

“Artiﬁcial Sequence” or “Unknown”;

if molecule is combined DNA/RNA.

M, under the following conditions: if

“n,” “Xaa,” or a modiﬁed or unusual

Provide appropriate identiﬁer for

feature, preferably from WIPO

Name/Key.....................<221>

L-amino acid or modiﬁed base was

used in a sequence.

Standard ST.25 (1998), Appendix 2,

Tables 5 and 6.

Mandatory (M) or Optional (O)Comments and formatDeﬁnitionNumeric

Identiﬁer

M, under the following conditions: if

“n,” “Xaa,” or a modiﬁed or unusual

Specify location within sequence;

where appropriate state number of ﬁrst

and last bases/amino acids in feature.

Location........................<222>

L-amino acid or modiﬁed base was

used in a sequence.

M, under the following conditions: if

“n,” “Xaa,” or a modiﬁed or unusual

Other relevant information; four lines

maximum.............................................

Other Information.........<223>

L-amino acid or modiﬁed base was

used in a sequence; if ORGANISM is

“Artiﬁcial Sequence” or “Unknown”;

if molecule is combined DNA/RNA.

O.Leave blank after <300>Publication Information<300>

O.Preferably max. of ten named authors

of publication; specify one name per

Authors.........................<301>

line; preferable format: Surname,

Other Names and/or Initials.

O..............................................................Title...............................<302>

O..............................................................Journal..........................<303>

O..............................................................Volume .........................<304>

O..............................................................Issue .............................<305>

O..............................................................Pages ............................<306>

R-246January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.823

Mandatory (M) or Optional (O)Comments and formatDeﬁnitionNumeric

Identiﬁer

O.Journal date on which data published;

specify as yyyy- mm-dd, MMM-yyyy

or Season- yyyy.

Date..............<307>

O.Accession number assigned by

database including database name.

Database Accession

Number.

<308>

O.Date of entry in database; specify as

yyyy-mm-dd or MMM-yyyy.

Database Entry

Date........

<309>

O.Document number; for patent-type

citations only. Specify as, for

example, US 07/ 999,999.

Patent Document

Number.

<310>

O.Document ﬁling date, for patent-type

citations only; specify as

yyyy-mm-dd.

Patent Filing

Date..............

<311>

O.Document publication date, for

patent-type citations only; specify as

yyyy-mm-dd.

Publication

Date................

<312>

O.FROM (position) TO (position)...........Relevant

Residues............

<313>

M.SEQ ID NO should follow the

numeric identiﬁer and should appear

Sequence.......................<400>

on the line preceding the actual

sequence.

[Added, 55 FR 18230, May 1, 1990, effective Oct.

1, 1990; revised, 63 FR 29620, June 1, 1998, effective

July 1, 1998; heading and para. (a) revised, 65 FR 54604,

Sept. 8, 2000, effective Sept. 8, 2000 (effective date

corrected, 65 FR 78958, Dec. 18, 2000); para. (a)(1)

revised, 68 FR 38611, June 30, 2003, effective July 30,

2003]

§ 1.824 Form and format for nucleotide

and/or amino acid sequence submissions in

computer readable form.

(a) The computer readable form required by §

1.821(e) shall meet the following requirements:

(1) The computer readable form shall contain

a single “Sequence Listing” as either a diskette,

series of diskettes, or other permissible media

outlined in paragraph (c) of this section.

(2) The “Sequence Listing” in paragraph

(a)(l) of this section shall be submitted in American

Standard Code for Information Interchange (ASCII)

text. No other formats shall be allowed.

(3) The computer readable form may be

created by any means, such as word processors,

nucleotide/amino acid sequence editors’ or other

custom computer programs; however, it shall

conform to all requirements detailed in this section.

(4) File compression is acceptable when

using diskette media, so long as the compressed ﬁle

is in a self-extracting format that will decompress

on one of the systems described in paragraph (b) of

this section.

(5) Page numbering must not appear within

the computer readable form version of the

“Sequence Listing” ﬁle.

(6) All computer readable forms must have

a label permanently afﬁxed thereto on which has

been hand-printed or typed: the name of the

applicant, the title of the invention, the date on

which the data were recorded on the computer

readable form, the operating system used, a

reference number, and an application number and

ﬁling date, if known. If multiple diskettes are

submitted, the diskette labels must indicate their

order (e.g., “1 of X”).

(b) Computer readable form submissions must

meet these format requirements:

January 2018R-247

§ 1.824CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) Computer Compatibility: IBM

PC/XT/AT or Apple Macintosh;

(2) Operating System Compatibility:

MS-DOS, MS-Windows, Unix or Macintosh;

(3) Line Terminator: ASCII Carriage Return

plus ASCII Line Feed; and

(4) Pagination: Continuous ﬁle (no “hard

page break” codes permitted).

be in any of the following media:

(1) Diskette: 3.50 inch, 1.44 Mb storage;

3.50 inch, 720 Kb storage; 5.25 inch, 1.2 Mb

storage; 5.25 inch, 360 Kb storage.

(2) Magnetic tape: 0.5 inch, up to 24000 feet;

Density: 1600 or 6250 bits per inch, 9 track; Format:

Unix tar command; specify blocking factor (not

“block size”); Line Terminator: ASCII Carriage

Return plus ASCII Line Feed.

(3) 8mm Data Cartridge: Format: Unix tar

command; specify blocking factor (not “block

size”); Line Terminator: ASCII Carriage Return

plus ASCII Line Feed.

(4) Compact disc: Format: ISO 9660 or High

Sierra Format.

(5) Magneto Optical Disk: Size/Storage

Speciﬁcations: 5.25 inch, 640 Mb.

(d) Computer readable forms that are submitted

to the Ofﬁce will not be returned to the applicant.

[Added, 55 FR 18230, May 1, 1990, effective Oct.

1, 1990; revised, 63 FR 29620, June 1, 1998, effective

July 1, 1998; revised, 65 FR 54604, Sept. 8, 2000,

effective Sept. 8, 2000 (effective date corrected, 65 FR

78958, Dec. 18, 2000)]

§ 1.825 Amendments to or replacement of

sequence listing and computer readable copy

thereof.

(a) Any amendment to a paper copy of the

“Sequence Listing” (§ 1.821(c)) must be made by

the submission of substitute sheets and include a

statement that the substitute sheets include no new

matter. Any amendment to a compact disc copy of

the “Sequence Listing” (§ 1.821(c)) must be made

by the submission of a replacement compact disc

(2 copies) in compliance with § 1.52(e).

Amendments must also be accompanied by a

statement that indicates support for the amendment

in the application, as ﬁled, and a statement that the

replacement compact disc includes no new matter.

(b) Any amendment to the paper or compact

disc copy of the “Sequence Listing,” in accordance

with paragraph (a) of this section, must be

accompanied by a substitute copy of the computer

readable form (§ 1.821(e)) including all previously

submitted data with the amendment incorporated

therein, accompanied by a statement that the copy

in computer readable form is the same as the

substitute copy of the “Sequence Listing.”

“Sequence Listing” in a patent; e.g., by reason of

reissue or certiﬁcate of correction, must comply

with the requirements of paragraphs (a) and (b) of

this section.

(d) If, upon receipt, the computer readable form

is found to be damaged or unreadable, applicant

must provide, within such time as set by the

Director, a substitute copy of the data in computer

readable form accompanied by a statement that the

substitute data is identical to that originally ﬁled.

[Added 55 FR 18230, May 1, 1990, effective Oct.

1, 1990; revised, 63 FR 29620, June 1, 1998, effective

July 1, 1998; paras. (a) and (b) revised, 65 FR 54604,

Sept. 8, 2000, effective Sept. 8, 2000 (effective date

corrected, 65 FR 78958, Dec. 18, 2000); para. (d) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003]

R-248January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.825

January 2018R-249

§ 1.825CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Subpart H — Inter Partes Reexamination

of Patents That Issued From an Original

Application Filed in the United States on or

After November 29, 1999

PRIOR ART CITATIONS

§ 1.902 Processing of prior art citations

during an inter partes reexamination

proceeding.

Citations by the patent owner in accordance with §

1.933 and by an inter partes reexamination third

party requester under § 1.915 or § 1.948 will be

entered in the inter partes reexamination ﬁle. The

entry in the patent ﬁle of other citations submitted

after the date of an order for reexamination pursuant

to § 1.931 by persons other than the patent owner,

or the third party requester under either § 1.913 or

§ 1.948, will be delayed until the inter partes

reexamination proceeding has been concluded by

the issuance and publication of a reexamination

certiﬁcate. See § 1.502 for processing of prior art

citations in patent and reexamination ﬁles during

an ex parte reexamination proceeding ﬁled under

§ 1.510.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective

May 16, 2007]

REQUIREMENTS FOR INTER PARTES

REEXAMINATION PROCEEDINGS

§ 1.903 Service of papers on parties in inter

partes reexamination.

The patent owner and the third party requester will

be sent copies of Ofﬁce actions issued during the

inter partes reexamination proceeding. After ﬁling

of a request for inter partes reexamination by a

third party requester, any document ﬁled by either

the patent owner or the third party requester must

be served on every other party in the reexamination

proceeding in the manner provided in § 1.248. Any

document must reﬂect service or the document may

be refused consideration by the Ofﬁce. The failure

of the patent owner or the third party requester to

serve documents may result in their being refused

consideration.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.904 Notice of inter partes reexamination

in Ofﬁcial Gazette.

A notice of the ﬁling of an inter partes

reexamination request will be published in the

Ofﬁcial Gazette. The notice published in the Ofﬁcial

Gazette under § 1.11(c) will be considered to be

constructive notice of the inter partes reexamination

R-250January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.902

proceeding and inter partes reexamination will

proceed.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.905 Submission of papers by the public

in inter partes reexamination.

Unless speciﬁcally provided for, no submissions on

behalf of any third parties other than third party

requesters as deﬁned in 35 U.S.C. 100(e) will be

considered unless such submissions are in

accordance with § 1.915 or entered in the patent ﬁle

prior to the date of the order for reexamination

pursuant to § 1.931. Submissions by third parties,

other than third party requesters, ﬁled after the date

of the order for reexamination pursuant to § 1.931,

must meet the requirements of § 1.501 and will be

treated in accordance with § 1.902. Submissions

which do not meet the requirements of § 1.501 will

be returned.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.906 Scope of reexamination in inter

partes reexamination proceeding.

(a) Claims in an inter partes reexamination

proceeding will be examined on the basis of patents

or printed publications and, with respect to subject

matter added or deleted in the reexamination

proceeding, on the basis of the requirements of 35

U.S.C. 112.

(b) Claims in an inter partes reexamination

proceeding will not be permitted to enlarge the scope

of the claims of the patent.

paragraphs (a) and (b) of this section will not be

resolved in an inter partes reexamination

proceeding. If such issues are raised by the patent

owner or the third party requester during a

reexamination proceeding, the existence of such

issues will be noted by the examiner in the next

Ofﬁce action, in which case the patent owner may

desire to consider the advisability of ﬁling a reissue

application to have such issues considered and

resolved.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.907 Inter partes reexamination

prohibited.

(a) Once an order to reexamine has been issued

under § 1.931, neither the third party requester, nor

its privies, may ﬁle a subsequent request for inter

partes reexamination of the patent until an inter

partes reexamination certiﬁcate is issued under §

1.997, unless authorized by the Director.

(b) Once a ﬁnal decision has been entered

against a party in a civil action arising in whole or

in part under 28 U.S.C. 1338 that the party has not

sustained its burden of proving invalidity of any

patent claim-in-suit, then neither that party nor its

privies may thereafter request inter partes

reexamination of any such patent claim on the basis

of issues which that party, or its privies, raised or

could have raised in such civil action, and an inter

partes reexamination requested by that party, or its

privies, on the basis of such issues may not

thereafter be maintained by the Ofﬁce.

reexamination proceeding instituted by a third party

requester is favorable to patentability of any original,

proposed amended, or new claims of the patent, then

neither that party nor its privies may thereafter

request inter partes reexamination of any such

patent claims on the basis of issues which that party,

or its privies, raised or could have raised in such

inter partes reexamination proceeding.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

§ 1.913 Persons eligible to ﬁle, and time for

ﬁling, a request for inter partes

reexamination.

(a) Except as provided for in § 1.907 and in

paragraph (b) of this section, any person other than

the patent owner or its privies may, at any time

during the period of enforceability of a patent which

issued from an original application ﬁled in the

United States on or after November 29, 1999, ﬁle

a request for inter partes reexamination by the

Ofﬁce of any claim of the patent on the basis of

January 2018R-251

§ 1.913CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

prior art patents or printed publications cited under

§ 1.501.

(b) Any request for an inter partes

reexamination submitted on or after September 16,

2012, will not be accorded a ﬁling date, and any

such request will not be granted.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 68 FR 70996, Dec. 22, 2003, effective

Jan. 21, 2004; revised, 76 FR 59055, Sept. 23, 2011,

effective Sept. 23, 2011]

§ 1.915 Content of request for inter partes

reexamination.

(a) The request must be accompanied by the fee

for requesting inter partes reexamination set forth

in § 1.20(c)(2).

(b) A request for inter partes reexamination

must include the following parts:

(1) An identiﬁcation of the patent by patent

number and every claim for which reexamination

is requested.

(2) A citation of the patents and printed

publications which are presented to provide a

showing that there is a reasonable likelihood that

the requester will prevail with respect to at least one

of the claims challenged in the request.

(3) A statement pointing out, based on the

cited patents and printed publications, each showing

of a reasonable likelihood that the requester will

prevail with respect to at least one of the claims

challenged in the request, and a detailed explanation

of the pertinency and manner of applying the patents

and printed publications to every claim for which

reexamination is requested.

(4) A copy of every patent or printed

publication relied upon or referred to in paragraphs

(b)(1) through (3) of this section, accompanied by

an English language translation of all the necessary

and pertinent parts of any non-English language

document.

(5) A copy of the entire patent including the

front face, drawings, and speciﬁcation/claims (in

double column format) for which reexamination is

requested, and a copy of any disclaimer, certiﬁcate

of correction, or reexamination certiﬁcate issued in

the patent. All copies must have each page plainly

written on only one side of a sheet of paper.

(6) A certiﬁcation by the third party

requester that a copy of the request has been served

in its entirety on the patent owner at the address

provided for in § 1.33(c). The name and address of

the party served must be indicated. If service was

not possible, a duplicate copy of the request must

be supplied to the Ofﬁce.

(7) A certiﬁcation by the third party

requester that the estoppel provisions of § 1.907 do

not prohibit the inter partes reexamination.

(8) A statement identifying the real party in

interest to the extent necessary for a subsequent

person ﬁling an inter partes reexamination request

to determine whether that person is a privy.

attorney or agent identifying another party on whose

behalf the request is being ﬁled, the attorney or

agent must have a power of attorney from that party

or be acting in a representative capacity pursuant to

§ 1.34.

(d) If the inter partes request does not include

the fee for requesting inter partes reexamination

required by paragraph (a) of this section and meet

all the requirements of paragraph (b) of this section,

then the person identiﬁed as requesting inter partes

reexamination will be so notiﬁed and will generally

be given an opportunity to complete the request

within a speciﬁed time. Failure to comply with the

notice will result in the inter partes reexamination

request not being granted a ﬁling date, and will

result in placement of the request in the patent ﬁle

as a citation if it complies with the requirements of

§ 1.501.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (d) revised, 71 FR 9260, Feb. 23, 2006,

effective Mar. 27, 2006; para. (d) revised, 71 FR 44219,

Aug. 4, 2006, effective Aug. 4, 2006; para. (c) revised,

72 FR 18892, Apr. 16, 2007, effective May 16, 2007;

paras. (b)(2) and (b)(3) revised, 76 FR 59055, Sept. 23,

2011, effective Sept. 23, 2011]

§ 1.919 Filing date of request for inter

partes reexamination.

(a) The ﬁling date of a request for inter partes

reexamination is the date on which the request

satisﬁes all the requirements for the request set forth

in § 1.915.

R-252January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.915

(b) If the request is not granted a ﬁling date, the

request will be placed in the patent ﬁle as a citation

of prior art if it complies with the requirements of

§ 1.501.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a) revised, 71 FR 9260, Feb. 23, 2006,

effective Mar. 27, 2006]

§ 1.923 Examiner’s determination on the

request for inter partes reexamination.

Within three months following the ﬁling date of a

request for inter partes reexamination under §

1.915, the examiner will consider the request and

determine whether or not the request and the prior

art establish a reasonable likelihood that the

requester will prevail with respect to at least one of

the claims challenged in the request. The examiner’s

determination will be based on the claims in effect

at the time of the determination, will become a part

of the ofﬁcial ﬁle of the patent, and will be mailed

to the patent owner at the address as provided for

in § 1.33(c) and to the third party requester. If the

examiner determines that the request has not

established a reasonable likelihood that the requester

will prevail with respect to at least one of the

challenged claims, the examiner shall refuse the

request and shall not order inter partes

reexamination.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective

May 16, 2007; revised, 76 FR 59055, Sept. 23, 2011,

effective Sept. 23, 2011]

§ 1.925 Partial refund if request for inter

partes reexamination is not ordered.

Where inter partes reexamination is not ordered, a

refund of a portion of the fee for requesting inter

partes reexamination will be made to the requester

in accordance with § 1.26(c).

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.927 Petition to review refusal to order

inter partes reexamination.

The third party requester may seek review by a

petition to the Director under § 1.181 within one

month of the mailing date of the examiner’s

determination refusing to order inter partes

reexamination. Any such petition must comply with

§ 1.181(b). If no petition is timely ﬁled or if the

decision on petition afﬁrms that a reasonable

likelihood that the requester will prevail with respect

to at least one of the claims challenged in the request

has not been established, the determination shall be

ﬁnal and nonappealable.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 76 FR 59055, Sept. 23, 2011,

effective Sept. 23, 2011]

INTER PARTES REEXAMINATION OF

PATENTS

§ 1.931 Order for inter partes

reexamination.

(a) If it is found that there is a reasonable

likelihood that the requester will prevail with respect

to at least one of the claims challenged in the

request, the determination will include an order for

inter partes reexamination of the patent for

resolution of the question of whether the requester

will prevail.

(b) If the order for inter partes reexamination

resulted from a petition pursuant to § 1.927, the inter

partes reexamination will ordinarily be conducted

by an examiner other than the examiner responsible

for the initial determination under § 1.923.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a) revised, 76 FR 59055, Sept. 23, 2011,

effective Sept. 23, 2011]

January 2018R-253

§ 1.931CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

INFORMATION DISCLOSURE IN INTER

PARTES REEXAMINATION

§ 1.933 Patent owner duty of disclosure in

inter partes reexamination proceedings.

(a) Each individual associated with the patent

owner in an inter partes reexamination proceeding

has a duty of candor and good faith in dealing with

the Ofﬁce, which includes a duty to disclose to the

Ofﬁce all information known to that individual to

be material to patentability in a reexamination

proceeding as set forth in § 1.555(a) and (b). The

duty to disclose all information known to be material

to patentability in an inter partes reexamination

proceeding is deemed to be satisﬁed by ﬁling a

paper in compliance with the requirements set forth

in § 1.555(a) and (b).

(b) The responsibility for compliance with this

section rests upon the individuals designated in

paragraph (a) of this section, and no evaluation will

be made by the Ofﬁce in the reexamination

proceeding as to compliance with this section. If

questions of compliance with this section are raised

by the patent owner or the third party requester

during a reexamination proceeding, they will be

noted as unresolved questions in accordance with §

1.906(c).

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

OFFICE ACTIONS AND RESPONSES

(BEFORE THE EXAMINER) IN INTER

PARTES REEXAMINATION

§ 1.935 Initial Ofﬁce action usually

accompanies order for inter partes

reexamination.

The order for inter partes reexamination will

usually be accompanied by the initial Ofﬁce action

on the merits of the reexamination.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.937 Conduct of inter partes

reexamination.

(a) All inter partes reexamination proceedings,

including any appeals to the Patent Trial and Appeal

Board, will be conducted with special dispatch

within the Ofﬁce, unless the Director makes a

determination that there is good cause for

suspending the reexamination proceeding.

(b) The inter partes reexamination proceeding

will be conducted in accordance with §§ 1.104

through 1.116, the sections governing the application

examination process, and will result in the issuance

of an inter partes reexamination certiﬁcate under

§ 1.997, except as otherwise provided.

the parties to the inter partes reexamination which

are directed to the merits of the proceeding must be

in writing and ﬁled with the Ofﬁce for entry into

the record of the proceeding.

(d) A petition in an inter partes reexamination

proceeding must be accompanied by the fee set forth

in § 1.20(c)(6), except for petitions under § 1.956

to extend the period for response by a patent owner,

petitions under § 1.958 to accept a delayed response

by a patent owner, petitions under § 1.78 to accept

an unintentionally delayed beneﬁt claim, and

petitions under § 1.530(l) for correction of

inventorship in a reexamination proceeding.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; para. (a) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012; para. (d) added,

77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]

§ 1.939 Unauthorized papers in inter partes

reexamination

(a) If an unauthorized paper is ﬁled by any party

at any time during the inter partes reexamination

proceeding it will not be considered and may be

returned.

(b) Unless otherwise authorized, no paper shall

be ﬁled prior to the initial Ofﬁce action on the merits

of the inter partes reexamination.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

R-254January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.933

§ 1.941 Amendments by patent owner in

inter partes reexamination.

Amendments by patent owner in inter partes

reexamination proceedings are made by ﬁling a

paper in compliance with §§ 1.530(d)-(k) and 1.943.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.943 Requirements of responses, written

comments, and briefs in inter partes

reexamination.

(a) The form of responses, written comments,

briefs, appendices, and other papers must be in

accordance with the requirements of § 1.52.

(b) Responses by the patent owner and written

comments by the third party requester shall not

exceed 50 pages in length, excluding amendments,

appendices of claims, and reference materials such

as prior art references.

and the third party requester shall not exceed thirty

pages or 14,000 words in length, excluding

appendices of claims and reference materials such

as prior art references. All other briefs ﬁled by any

party shall not exceed ﬁfteen pages in length or

7,000 words. If the page limit for any brief is

exceeded, a certiﬁcate is required stating the number

of words contained in the brief.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.945 Response to Ofﬁce action by patent

owner in inter partes reexamination.

(a) The patent owner will be given at least thirty

days to ﬁle a response to any Ofﬁce action on the

merits of the inter partes reexamination.

(b) Any supplemental response to the Ofﬁce

action will be entered only where the supplemental

response is accompanied by a showing of sufﬁcient

cause why the supplemental response should be

entered. The showing of sufﬁcient cause must

include:

(1) An explanation of how the requirements

of § 1.111(a)(2)(i) are satisﬁed;

(2) An explanation of why the supplemental

response was not presented together with the original

response to the Ofﬁce action; and

(3) A compelling reason to enter the

supplemental response.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective

May 16, 2007]

§ 1.947 Comments by third party requester

to patent owner’s response in inter partes

reexamination.

Each time the patent owner ﬁles a response to an

Ofﬁce action on the merits pursuant to § 1.945, a

third party requester may once ﬁle written comments

within a period of 30 days from the date of service

of the patent owner’s response. These comments

shall be limited to issues raised by the Ofﬁce action

or the patent owner’s response. The time for

submitting comments by the third party requester

may not be extended. For the purpose of ﬁling the

written comments by the third party requester, the

comments will be considered as having been

received in the Ofﬁce as of the date of deposit

speciﬁed in the certiﬁcate under § 1.8.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.948 Limitations on submission of prior

art by third party requester following the

order for inter partes reexamination.

(a) After the inter partes reexamination order,

the third party requester may only cite additional

prior art as deﬁned under § 1.501 if it is ﬁled as part

of a comments submission under § 1.947 or §

1.951(b) and is limited to prior art:

(1) which is necessary to rebut a ﬁnding of

fact by the examiner;

(2) which is necessary to rebut a response

of the patent owner; or

(3) which for the ﬁrst time became known

or available to the third party requester after the

ﬁling of the request for inter partes reexamination

proceeding. Prior art submitted under paragraph

(a)(3) of this section must be accompanied by a

statement as to when the prior art ﬁrst became

January 2018R-255

§ 1.948CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

known or available to the third party requester and

must include a discussion of the pertinency of each

reference to the patentability of at least one claim.

(b) [Reserved]

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.949 Examiner’s Ofﬁce action closing

prosecution in inter partes reexamination.

Upon consideration of the issues a second or

subsequent time, or upon a determination of

patentability of all claims, the examiner shall issue

an Ofﬁce action treating all claims present in the

inter partes reexamination, which may be an action

closing prosecution. The Ofﬁce action shall set forth

all rejections and determinations not to make a

proposed rejection, and the grounds therefor. An

Ofﬁce action will not usually close prosecution if

it includes a new ground of rejection which was not

previously addressed by the patent owner, unless

the new ground was necessitated by an amendment.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.951 Options after Ofﬁce action closing

prosecution in inter partes reexamination.

(a) After an Ofﬁce action closing prosecution

in an inter partes reexamination, the patent owner

may once ﬁle comments limited to the issues raised

in the Ofﬁce action closing prosecution. The

comments can include a proposed amendment to

the claims, which amendment will be subject to the

criteria of § 1.116 as to whether or not it shall be

admitted. The comments must be ﬁled within the

time set for response in the Ofﬁce action closing

prosecution.

(b) When the patent owner does ﬁle comments,

a third party requester may once ﬁle comments

responsive to the patent owner’s comments within

30 days from the date of service of patent owner’s

comments on the third party requester.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

§ 1.953 Examiner’s Right of Appeal Notice

in inter partes reexamination.

(a) Upon considering the comments of the patent

owner and the third party requester subsequent to

the Ofﬁce action closing prosecution in an inter

partes reexamination, or upon expiration of the time

for submitting such comments, the examiner shall

issue a Right of Appeal Notice, unless the examiner

reopens prosecution and issues another Ofﬁce action

on the merits.

(b) Expedited Right of Appeal Notice: At any

time after the patent owner’s response to the initial

Ofﬁce action on the merits in an inter partes

reexamination, the patent owner and all third party

requesters may stipulate that the issues are

appropriate for a ﬁnal action, which would include

a ﬁnal rejection and/or a ﬁnal determination

favorable to patentability, and may request the

issuance of a Right of Appeal Notice. The request

must have the concurrence of the patent owner and

all third party requesters present in the proceeding

and must identify all of the appealable issues and

the positions of the patent owner and all third party

requesters on those issues. If the examiner

determines that no other issues are present or should

be raised, a Right of Appeal Notice limited to the

identiﬁed issues shall be issued.

action, which comprises a ﬁnal rejection setting

forth each ground of rejection and/or ﬁnal decision

favorable to patentability including each

determination not to make a proposed rejection, an

identiﬁcation of the status of each claim, and the

reasons for decisions favorable to patentability

and/or the grounds of rejection for each claim. No

amendment can be made in response to the Right

of Appeal Notice. The Right of Appeal Notice shall

set a one-month time period for either party to

appeal. If no notice of appeal is ﬁled, prosecution

in the inter partes reexamination proceeding will

be terminated, and the Director will proceed to issue

and publish a certiﬁcate under § 1.997 in accordance

with the Right of Appeal Notice.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (c) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; paras. (b) and (c) revised, 72 FR

18892, Apr. 16, 2007, effective May 16, 2007]

R-256January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.949

INTERVIEWS PROHIBITED IN INTER

PARTES REEXAMINATION

§ 1.955 Interviews prohibited in inter partes

reexamination proceedings.

There will be no interviews in an inter partes

reexamination proceeding which discuss the merits

of the proceeding.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

EXTENSIONS OF TIME, TERMINATING

OF REEXAMINATION PROSECUTION,

AND PETITIONS TO REVIVE IN INTER

PARTES REEXAMINATION

§ 1.956 Patent owner extensions of time in

inter partes reexamination.

The time for taking any action by a patent owner in

an inter partes reexamination proceeding will be

extended only for sufﬁcient cause and for a

reasonable time speciﬁed. Any request for such

extension must be ﬁled on or before the day on

which action by the patent owner is due, but in no

case will the mere ﬁling of a request effect any

extension. Any request for such extension must be

accompanied by the petition fee set forth in §

1.17(g). See § 1.304(a) for extensions of time for

ﬁling a notice of appeal to the U.S. Court of Appeals

for the Federal Circuit.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 69 FR 56481, Sept. 21, 2004, effective

Nov. 22, 2004]

§ 1.957 Failure to ﬁle a timely, appropriate

or complete response or comment in inter

partes reexamination.

(a) If the third party requester ﬁles an untimely

or inappropriate comment, notice of appeal or brief

in an inter partes reexamination, the paper will be

refused consideration.

(b) If no claims are found patentable, and the

patent owner fails to ﬁle a timely and appropriate

response in an inter partes reexamination

proceeding, the prosecution in the reexamination

proceeding will be a terminated prosecution and the

Director will proceed to issue and publish a

certiﬁcate concluding the reexamination proceeding

under § 1.997 in accordance with the last action of

the Ofﬁce.

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 the time of the failure

to respond, and to any claims added thereafter which

do not expand the scope of the claims which were

found patentable at that time.

(d) When action by the patent owner is a bona

ﬁde attempt to respond and to advance the

prosecution and is substantially a complete response

to the Ofﬁce action, but consideration of some

matter or compliance with some requirement has

been inadvertently omitted, an opportunity to explain

and supply the omission may be given.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (b) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; para. (b) revised, 72 FR 18892,

Apr. 16, 2007, effective May 16, 2007]

§ 1.958 Petition to revive inter partes

reexamination prosecution terminated for

lack of patent owner response.

If a response by the patent owner is not timely ﬁled

in the Ofﬁce, a petition may be ﬁled pursuant to §

1.137 to revive a reexamination prosecution

terminated under § 1.957(b) or limited under §

1.957(c) if the delay in response was unintentional.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; heading revised, 72 FR 18892,

Apr. 16, 2007, effective May 16, 2007; revised, 78 FR

62368, Oct. 21, 2013, effective Dec. 18, 2013]

January 2018R-257

§ 1.958CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

APPEAL TO THE PATENT TRIAL AND

APPEAL BOARD IN INTER PARTES

REEXAMINATION

§ 1.959 Appeal in inter partes reexamination.

Appeals to the Patent Trial and Appeal Board under

35 U.S.C. 134(c) are conducted according to part

41 of this title.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para (f) added, 68 FR 70996, Dec. 22, 2003,

effective Jan. 21, 2004; revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012]

§ 1.961 - 1.977 [Reserved]

§ 1.979 Return of Jurisdiction from the

Patent Trial and Appeal Board; termination

of appeal proceedings.

(a) Jurisdiction over an inter partes

reexamination proceeding passes to the examiner

after a decision by the Patent Trial and Appeal Board

upon transmittal of the ﬁle to the examiner, subject

to each appellant’s right of appeal or other review,

for such further action as the condition of the inter

partes reexamination proceeding may require, to

carry into effect the decision of the Patent Trial and

Appeal Board.

(b) Upon judgment in the appeal before the

Patent Trial and Appeal Board, if no further appeal

has been taken (§ 1.983), the prosecution in the inter

partes reexamination proceeding will be terminated

and the Director will issue and publish a certiﬁcate

under § 1.997 concluding the proceeding. If an

appeal to the U.S. Court of Appeals for the Federal

Circuit has been ﬁled, that appeal is considered

terminated when the mandate is issued by the Court.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (f) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; paras. (e) & (f) revised, 68 FR

70996, Dec. 22, 2003, effective Jan. 21, 2004; revised,

69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004;

heading and para. (b) revised, 72 FR 18892, Apr. 16,

2007, effective May 16, 2007; revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012]

§ 1.981 Reopening after a ﬁnal decision of

the Patent Trial and Appeal Board.

When a decision by the Patent Trial and Appeal

Board on appeal has become ﬁnal for judicial

review, prosecution of the inter partes

reexamination proceeding will not be reopened or

reconsidered by the primary examiner except under

the provisions of § 41.77 of this title without the

written authority of the Director, and then only for

the consideration of matters not already adjudicated,

sufﬁcient cause being shown.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004,

effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012]

APPEAL TO THE UNITED STATES

COURT OF APPEALS FOR THE

FEDERAL CIRCUIT IN INTER PARTES

REEXAMINATION

§ 1.983 Appeal to the United States Court

of Appeals for the Federal Circuit in inter

partes reexamination.

(a) The patent owner or third party requester in

an inter partes reexamination proceeding who is a

party to an appeal to the Patent Trial and Appeal

Board and who is dissatisﬁed with the decision of

the Patent Trial and Appeal Board may, subject to

§ 41.81, appeal to the U.S. Court of Appeals for the

Federal Circuit and may be a party to any appeal

thereto taken from a reexamination decision of the

Patent Trial and Appeal Board.

(b) The appellant must take the following steps

in such an appeal:

(1) In the U.S. Patent and Trademark Ofﬁce,

timely ﬁle a written notice of appeal directed to the

Director in accordance with §§ 1.302 and 1.304;

(2) In the U.S. Court of Appeals for the

Federal Circuit, ﬁle a copy of the notice of appeal

and pay the fee, as provided for in the rules of the

U.S. Court of Appeals for the Federal Circuit; and

(3) Serve a copy of the notice of appeal on

every other party in the reexamination proceeding

in the manner provided in § 1.248.

R-258January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.959

appeal to the U.S. Court of Appeals for the Federal

Circuit, the third party requester may cross appeal

to the U.S. Court of Appeals for the Federal Circuit

if also dissatisﬁed with the decision of the Patent

Trial and Appeal Board.

(d) If the third party requester has ﬁled a notice

of appeal to the U.S. Court of Appeals for the

Federal Circuit, the patent owner may cross appeal

to the U.S. Court of Appeals for the Federal Circuit

if also dissatisﬁed with the decision of the Patent

Trial and Appeal Board.

(e) A party electing to participate in an

appellant’s appeal must, within fourteen days of

service of the appellant’s notice of appeal under

paragraph (b) of this section, or notice of cross

appeal under paragraphs (c) or (d) of this section,

take the following steps:

(1) In the U.S. Patent and Trademark Ofﬁce,

timely ﬁle a written notice directed to the Director

electing to participate in the appellant’s appeal to

the U.S. Court of Appeals for the Federal Circuit

by mail to, or hand service on, the General Counsel

as provided in § 104.2;

(2) In the U.S. Court of Appeals for the

Federal Circuit, ﬁle a copy of the notice electing to

participate in accordance with the rules of the U.S.

Court of Appeals for the Federal Circuit; and

(3) Serve a copy of the notice electing to

participate on every other party in the reexamination

proceeding in the manner provided in § 1.248.

(f) Notwithstanding any provision of the rules,

in any reexamination proceeding commenced prior

to November 2, 2002, the third party requester is

precluded from appealing and cross appealing any

decision of the Patent Trial and Appeal Board to the

U.S. Court of Appeals for the Federal Circuit, and

the third party requester is precluded from

participating in any appeal taken by the patent owner

to the U.S. Court of Appeals for the Federal Circuit.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; revised, 68 FR 70996, Dec. 22,

2003, effective Jan. 21, 2004; para. (a) revised, 72 FR

18892, Apr. 16, 2007, effective May 16, 2007; paras. (a),

(c), (d), and (f) revised, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012]

CONCURRENT PROCEEDINGS

INVOLVING SAME PATENT IN INTER

PARTES REEXAMINATION

§ 1.985 Notiﬁcation of prior or concurrent

proceedings in inter partes reexamination.

(a) In any inter partes reexamination

proceeding, the patent owner shall call the attention

of the Ofﬁce to any prior or concurrent proceedings

in which the patent is or was involved, including

but not limited to interference or trial before the

Patent Trial and Appeal Board, reissue,

reexamination, or litigation and the results of such

proceedings.

(b) Notwithstanding any provision of the rules,

any person at any time may ﬁle a paper in an inter

partes reexamination proceeding notifying the

Ofﬁce of a prior or concurrent proceeding in which

the same patent is or was involved, including but

not limited to interference or trial before the Patent

Trial and Appeal Board, reissue, reexamination, or

litigation and the results of such proceedings. Such

paper must be limited to merely providing notice of

the other proceeding without discussion of issues

of the current inter partes reexamination

proceeding.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 77 FR 46615, Aug. 6, 2012, effective

Sept. 16, 2012]

§ 1.987 Suspension of inter partes

reexamination proceeding due to litigation.

If a patent in the process of inter partes

reexamination is or becomes involved in litigation,

the Director shall determine whether or not to

suspend the inter partes reexamination proceeding.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012]

§ 1.989 Merger of concurrent reexamination

proceedings.

(a) If any reexamination is ordered while a prior

inter partes reexamination proceeding is pending

for the same patent and prosecution in the prior inter

January 2018R-259

§ 1.989CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

partes reexamination proceeding has not been

terminated, a decision may be made to merge the

two proceedings or to suspend one of the two

proceedings. Where merger is ordered, the merged

examination will normally result in the issuance and

publication of a single reexamination certiﬁcate

under § 1.997.

(b) An inter partes reexamination proceeding

ﬁled under § 1.913 which is merged with an ex

parte reexamination proceeding ﬁled under § 1.510

will result in the merged proceeding being governed

by §§ 1.902 through 1.997, except that the rights of

any third party requester of the ex parte

reexamination shall be governed by §§ 1.510

through 1.560.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a) revised, 72 FR 18892, Apr. 16, 2007,

effective May 16, 2007]

§ 1.991 Merger of concurrent reissue

application and inter partes reexamination

proceeding.

If a reissue application and an inter partes

reexamination proceeding on which an order

pursuant to § 1.931 has been mailed are pending

concurrently on a patent, a decision may be made

to merge the two proceedings or to suspend one of

the two proceedings. Where merger of a reissue

application and an inter partes reexamination

proceeding is ordered, the merged proceeding will

be conducted in accordance with §§ 1.171 through

1.179, and the patent owner will be required to place

and maintain the same claims in the reissue

application and the inter partes reexamination

proceeding during the pendency of the merged

proceeding. In a merged proceeding the third party

requester may participate to the extent provided

under §§ 1.902 through 1.997 and 41.60 through

41.81, except that such participation shall be limited

to issues within the scope of inter partes

reexamination. The examiner’s actions and any

responses by the patent owner or third party

requester in a merged proceeding will apply to both

the reissue application and the inter partes

reexamination proceeding and be physically entered

into both ﬁles. Any inter partes reexamination

proceeding merged with a reissue application shall

be concluded by the grant of the reissued patent.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 72 FR 18892, Apr. 16, 2007, effective

May 16, 2007]

§ 1.993 Suspension of concurrent

interference and inter partes reexamination

proceeding.

If a patent in the process of inter partes

reexamination is or becomes involved in an

interference or trial before the Patent Trial and

Appeal Board, the Director may suspend the inter

partes reexamination, interference, or trial. The

Director will not consider a request to suspend an

interference or trial unless a motion under §

41.121(a)(3) of this title to suspend the interference

or trial has been presented to, and denied by, an

administrative patent judge and the request is ﬁled

within ten (10) days of a decision by an

administrative patent judge denying the motion for

suspension or such other time as the administrative

patent judge may set.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004,

effective Sept. 13, 2004; revised, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012]

§ 1.995 Third party requester’s participation

rights preserved in merged proceeding.

When a third party requester is involved in one or

more proceedings, including an inter partes

reexamination proceeding, the merger of such

proceedings will be accomplished so as to preserve

the third party requester’s right to participate to the

extent speciﬁcally provided for in these regulations.

In merged proceedings involving different

requesters, any paper ﬁled by one party in the

merged proceeding shall be served on all other

parties of the merged proceeding.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001]

R-260January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.991

REEXAMINATION CERTIFICATE IN

INTER PARTES REEXAMINATION

§ 1.997 Issuance and publication of inter

partes reexamination certiﬁcate concludes

inter partes reexamination proceeding.

(a) To conclude an inter partes reexamination

proceeding, the Director will issue and publish an

inter partes reexamination certiﬁcate in accordance

with 35 U.S.C.316 setting forth the results of the

inter partes reexamination proceeding and the

content of the patent following the inter partes

reexamination proceeding.

(b) A certiﬁcate will be issued and published in

each patent in which an inter partes reexamination

proceeding has been ordered under § 1.931. Any

statutory disclaimer ﬁled by the patent owner will

be made part of the certiﬁcate.

owner at the address as provided for in § 1.33(c). A

copy of the certiﬁcate will also be sent to the third

party requester of the inter partes reexamination

proceeding.

(d) If a certiﬁcate has been issued and published

which cancels all of the claims of the patent, no

further Ofﬁce proceedings will be conducted with

that patent or any reissue applications or any

reexamination requests relating thereto.

(e) If the inter partes reexamination proceeding

is terminated by the grant of a reissued patent as

provided in § 1.991, the reissued patent will

constitute the reexamination certiﬁcate required by

this section and 35 U.S.C. 316.

(f) A notice of the issuance of each certiﬁcate

under this section will be published in the Ofﬁcial

Gazette.

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb.

5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; heading and paras. (a), (b), and

(d) revised, 72 FR 18892, Apr. 16, 2007, effective May

16, 2007]

Subpart I — International Design

Application

General Information

§ 1.1001 Deﬁnitions related to international

design applications.

(a) Article as used in this subpart means an

article of the Hague Agreement;

(b) Regulations as used in this subpart, when

capitalized, means the “Common Regulations Under

the 1999 Act and the 1960 Act of the Hague

Agreement”;

capitalized, means one of the Regulations;

(d) Administrative Instructions as used in this

subpart means the Administrative Instructions

referred to in Rule 34;

(e) 1960 Act as used in this subpart means the

Act signed at the Hague on November 28, 1960, of

the Hague Agreement;

(f) Other terms and expressions in subpart I not

deﬁned in this section are as deﬁned in Article 1,

Rule 1, and 35 U.S.C. 381.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1002 The United States Patent and

Trademark Ofﬁce as an ofﬁce of indirect

ﬁling.

(a) The United States Patent and Trademark

Ofﬁce, as an ofﬁce of indirect ﬁling, shall accept

international design applications where the

applicant’s Contracting Party is the United States.

(b) The major functions of the United States

Patent and Trademark Ofﬁce as an ofﬁce of indirect

ﬁling include:

(1) Receiving and according a receipt date

to international design applications;

(2) Collecting and, when required,

transmitting fees due for processing international

design applications;

(3) Determining compliance with applicable

requirements of part 5 of this chapter; and

January 2018R-261

§ 1.1002CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(4) Transmitting an international design

application to the International Bureau, unless

prescriptions concerning national security prevent

the application from being transmitted.

[Added,80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1003 The United States Patent and

Trademark Ofﬁce as a designated ofﬁce.

(a) The United States Patent and Trademark

Ofﬁce will act as a designated ofﬁce (“United States

Designated Ofﬁce”) for international design

applications in which the United States has been

designated as a Contracting Party in which

protection is sought.

(b) The major functions of the United States

Designated Ofﬁce include:

(1) Accepting for national examination

international design applications which satisfy the

requirements of the Hague Agreement, the

Regulations, and the regulations;

(2) Performing an examination of the

international design application in accordance with

35 U.S.C. chapter 16; and

(3) Communicating the results of

examination to the International Bureau.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1004 The International Bureau.

(a) The International Bureau is the World

Intellectual Property Organization located at

Geneva, Switzerland. It is the international

intergovernmental organization which acts as the

coordinating body under the Hague Agreement and

the Regulations.

(b) The major functions of the International

Bureau include:

(1) Receiving international design

applications directly from applicants and indirectly

from an ofﬁce of indirect ﬁling;

(2) Collecting required fees and crediting

designation fees to the accounts of the Contracting

Parties concerned;

(3) Reviewing international design

applications for compliance with prescribed formal

requirements;

(4) Translating international design

applications into the required languages for

recordation and publication;

(5) Registering international designs in the

International Register where the international design

application complies with the applicable

requirements;

(6) Publishing international registrations in

the International Designs Bulletin; and

(7) Sending copies of the publication of the

international registration to each designated ofﬁce.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1005 Display of currently valid control

number under the Paperwork Reduction Act.

(a) Pursuant to the Paperwork Reduction Act of

1995 (44 U.S.C. 3501 et seq.), the collection of

information in this subpart has been reviewed and

approved by the Ofﬁce of Management and Budget

under control number 0651-0075.

(b) Notwithstanding any other provision of law,

no person is required to respond to nor shall a person

be subject to a penalty for failure to comply with a

collection of information subject to the requirements

of the Paperwork Reduction Act unless that

collection of information displays a currently valid

Ofﬁce of Management and Budget control number.

This section constitutes the display required by 44

U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the

collection of information under Ofﬁce of

Management and Budget control number 0651-0075

(see 5 CFR 1320.5(b)(2)(ii)(D)).

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

WHO MAY FILE AN INTERNATIONAL

DESIGN APPLICATION

§ 1.1011 Applicant for international design

application.

(a) Only persons who are nationals of the United

States or who have a domicile, a habitual residence,

R-262January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1003

or a real and effective industrial or commercial

establishment in the territory of the United States

may ﬁle international design applications through

the United States Patent and Trademark Ofﬁce.

(b) Although the United States Patent and

Trademark Ofﬁce will accept international design

applications ﬁled by any person referred to in

paragraph (a) of this section, an international design

application designating the United States may be

refused by the Ofﬁce as a designated ofﬁce if the

applicant is not a person qualiﬁed under 35 U.S.C.

chapter 11 to be an applicant.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1012 Applicant’s Contracting Party.

In order to ﬁle an international design application

through the United States Patent and Trademark

Ofﬁce as an ofﬁce of indirect ﬁling, the United

States must be applicant’s Contracting Party

(Articles 4 and 1(xiv)).

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

THE INTERNATIONAL DESIGN

APPLICATION

§ 1.1021 Contents of the international design

application.

(a) Mandatory contents. The international

design application shall be in English, French, or

Spanish (Rule 6(1)) and shall contain or be

accompanied by:

(1) A request for international registration

under the Hague Agreement (Article 5(1)(i));

(2) The prescribed data concerning the

applicant (Article 5(1)(ii) and Rule 7(3)(i) and (ii));

(3) The prescribed number of copies of a

reproduction or, at the choice of the applicant, of

several different reproductions of the industrial

design that is the subject of the international design

application, presented in the prescribed manner;

however, where the industrial design is

two-dimensional and a request for deferment of

publication is made in accordance with Article 5(5),

the international design application may, instead of

containing reproductions, be accompanied by the

prescribed number of specimens of the industrial

design (Article 5(1)(iii));

(4) An indication of the product or products

that constitute the industrial design or in relation to

which the industrial design is to be used, as

prescribed (Article 5(1)(iv) and Rule 7(3)(iv));

(5) An indication of the designated

Contracting Parties (Article 5(1)(v));

(6) The prescribed fees (Article 5(1)(vi) and

Rule 12(1));

(7) The Contracting Party or Parties in

respect of which the applicant fulﬁlls the conditions

to be the holder of an international registration (Rule

7(3)(iii));

(8) The number of industrial designs

included in the international design application,

which may not exceed 100, and the number of

reproductions or specimens of the industrial designs

accompanying the international design application

(Rule 7(3)(v));

(9) The amount of the fees being paid and

the method of payment, or instructions to debit the

required amount of fees to an account opened with

the International Bureau, and the identiﬁcation of

the party effecting the payment or giving the

instructions (Rule 7(3)(vii)); and

(10) An indication of applicant’s Contracting

Party as required under Rule 7(4)(a).

(b) Additional mandatory contents required by

certain Contracting Parties.

(1) Where the international design

application contains the designation of a Contracting

Party that requires, pursuant to Article 5(2), any of

the following elements, then the international design

application shall contain such required element(s):

(i) Indications concerning the identity of

the creator of the industrial design that is the subject

of that application (Rule 11(1));

(ii) A brief description of the

reproduction or of the characteristic features of the

industrial design that is the subject of that

application (Rule 11(2));

(iii) A claim (Rule 11(3)).

(2) Where the international design

application contains the designation of a Contracting

January 2018R-263

§ 1.1021CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Party that has made a declaration under Rule 8(1),

then the international application shall contain the

statement, document, oath or declaration speciﬁed

in that declaration (Rule 7(4)(c)).

application may contain:

(1) Two or more industrial designs, subject

to the prescribed conditions (Article 5(4) and Rule

7(7));

(2) A request for deferment of publication

(Article 5(5) and Rule 7(5)(e)) or a request for

immediate publication (Rule 17);

(3) An element referred to in item (i) or (ii)

of Article 5(2)(b) of the Hague Agreement or in

Article 8(4)(a) of the 1960 Act even where that

element is not required in consequence of a

notiﬁcation in accordance with Article 5(2)(a) of

the Hague Agreement or in consequence of a

requirement under Article 8(4)(a) of the 1960 Act

(Rule 7(5)(a));

(4) The name and address of applicant’s

representative, as prescribed (Rule 7(5)(b));

(5) A claim of priority of one or more earlier

ﬁled applications in accordance with Article 6 and

Rule 7(5)(c);

(6) A declaration, for purposes of Article 11

of the Paris Convention, that the product or products

which constitute the industrial design or in which

the industrial design is incorporated have been

shown at an ofﬁcial or ofﬁcially recognized

international exhibition, together with the place

where the exhibition was held and the date on which

the product or products were ﬁrst exhibited there

and, where less than all the industrial designs

contained in the international design application are

concerned, the indication of those industrial designs

to which the declaration relates or does not relate

(Rule 7(5)(d));

(7) Any declaration, statement or other

relevant indication as may be speciﬁed in the

Administrative Instructions (Rule 7(5)(f));

(8) A statement that identiﬁes information

known by the applicant to be material to the

eligibility for protection of the industrial design

concerned (Rule 7(5)(g));

(9) A proposed translation of any text matter

contained in the international design application for

purposes of recording and publication (Rule 6(4)).

(d) Required contents where the United States

is designated. In addition to the mandatory

requirements set forth in paragraph (a) of this

section, an international design application that

designates the United States shall contain or be

accompanied by:

(1) A claim (§§ 1.1021(b)(1)(iii) and

1.1025);

(2) Indications concerning the identity of the

creator (i.e., the inventor, see § 1.9(d)) in accordance

with Rule 11(1); and

(3) The inventor’s oath or declaration (§§

1.63 and 1.64). The requirements in §§ 1.63(b) and

1.64(b)(4) to identify each inventor by his or her

legal name, mailing address, and residence, if an

inventor lives at a location which is different from

the mailing address, and the requirement in §

1.64(b)(2) to identify the residence and mailing

address of the person signing the substitute statement

will be considered satisﬁed by the presentation of

such information in the international design

application prior to international registration.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1022 Form and signature.

(a) The international design application shall be

presented on the ofﬁcial form (Rules 7(1) and 1(vi)).

(b) The international design application shall

be signed by the applicant.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1023 Filing date of an international

design application in the United States.

(a) Subject to paragraph (b) of this section, the

ﬁling date of an international design application in

the United States is the date of international

registration determined by the International Bureau

under the Hague Agreement (35 U.S.C. 384 and

381(a)(5)).

(b) Where the applicant believes the

international design application is entitled under the

R-264January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1022

Hague Agreement to a ﬁling date in the United

States other than the date of international

registration, the applicant may petition the Director

under this paragraph to accord the international

design application a ﬁling date in the United States

other than the date of international registration. Such

petition must be accompanied by the fee set forth

in § 1.17(f) and include a showing to the satisfaction

of the Director that the international design

application is entitled to such ﬁling date.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1024 The description.

An international design application designating the

United States must include a speciﬁcation as

prescribed by 35 U.S.C. 112 and preferably include

a brief description of the reproduction pursuant to

Rule 7(5)(a) describing the view or views of the

reproductions.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1025 The claim.

The speciﬁc wording of the claim in an international

design application designating the United States

shall be in formal terms to the ornamental design

for the article (specifying name of article) as shown,

or as shown and described. More than one claim is

neither required nor permitted for purposes of the

United States.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1026 Reproductions.

Reproductions shall comply with the requirements

of Rule 9 and Part Four of the Administrative

Instructions.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1027 Specimens.

Where a request for deferment of publication has

been ﬁled in respect of a two dimensional industrial

design, the international design application may

include specimens of the design in accordance with

Rule 10 and Part Four of the Administrative

Instructions. Specimens are not permitted in an

international design application that designates the

United States or any other Contracting Party which

does not permit deferment of publication.

[Added,80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1028 Deferment of publication.

The international design application may contain a

request for deferment of publication, provided the

application does not designate the United States or

any other Contracting Party which does not permit

deferment of publication.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

FEES

§ 1.1031 International design application

fees.

(a) International design applications ﬁled

through the Ofﬁce as an ofﬁce of indirect ﬁling are

subject to payment of a transmittal fee (35 U.S.C.

382(b) and Article 4(2)) in the amount of :

By a micro entity (§ 1.29).................$30.00

By a small entity (§ 1.27(a)) ..............60.00

By other than a small or micro

entity.............................................................120.00

(b) The Schedule of Fees annexed to the

Regulations (Rule 27(1)), a list of individual

designation fee amounts, and a fee calculator may

be viewed on the Web site of the World Intellectual

Property Organization, currently available at

http://www.wipo.int/hague.

International Bureau may be paid either directly to

the International Bureau or through the Ofﬁce as an

ofﬁce of indirect ﬁling in the amounts speciﬁed on

the World Intellectual Property Organization Web

site described in paragraph (b) of this section:

(1) International application fees (Rule

12(1)); and

January 2018R-265

§ 1.1031CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(2) Fee for descriptions exceeding 100 words

(Rule 11(2)).

(d) The fees referred to in paragraph (c) of this

section may be paid as follows:

(1) Directly to the International Bureau in

Swiss currency (see Administrative Instruction 801);

(2) Through the Ofﬁce as an ofﬁce of

indirect ﬁling, provided such fees are paid no later

than the date of payment of the transmittal fee

required under paragraph (a) of this section. Any

payment through the Ofﬁce must be in U.S. dollars.

Applicants paying the fees in paragraph (c) of this

section through the Ofﬁce may be subject to a

requirement by the International Bureau to pay

additional amounts where the conversion from U.S.

dollars to Swiss currency results in the International

Bureau receiving less than the prescribed amounts.

(e) Payment of the fees referred to in Article 17

and Rule 24 for renewing an international

registration (“renewal fees”) is not required to

maintain a U.S. patent issuing on an international

design application in force. Renewal fees, if

required, must be submitted directly to the

International Bureau. Any renewal fee submitted to

the Ofﬁce will not be transmitted to the International

Bureau.

(f) The designation fee for the United States

shall consist of:

(1) A ﬁrst part established in Swiss currency

pursuant to Hague Rule 28 based on the combined

amounts of the basic ﬁling fee (§ 1.16(b)), search

fee (§ 1.16(l)), and examination fee (§ 1.16(p)) for

a design application. The ﬁrst part is payable at the

time of ﬁling the international design application;

and

(2) A second part (issue fee) as provided in

§ 1.18(b). The second part is payable within the

period speciﬁed in a notice of allowance (§ 1.311).

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015; para. (a) revised and para. (f) added, 82 FR

52780, Nov. 14, 2017, effective Jan. 16, 2018]

REPRESENTATION

§ 1.1041 Representation in an international

design application.

(a) The applicant may appoint a representative

before the International Bureau in accordance with

Rule 3.

(b) Applicants of international design

applications may be represented before the Ofﬁce

as an ofﬁce of indirect ﬁling by a practitioner

registered (§ 11.6) or granted limited recognition (§

11.9(a) or (b)) to practice before the Ofﬁce in patent

matters. Such practitioner may act pursuant to § 1.34

or pursuant to appointment by the applicant. The

appointment must be in writing signed by the

applicant, must give the practitioner power to act

on behalf of the applicant, and must specify the

name and registration number or limited recognition

number of each practitioner. An appointment of a

representative made in the international design

application pursuant to Rule 3(2) that complies with

the requirements of this paragraph will be effective

as an appointment before the Ofﬁce as an ofﬁce of

indirect ﬁling.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1042 Correspondence respecting

international design applications ﬁled with

the Ofﬁce as an ofﬁce of indirect ﬁling.

The applicant may specify a correspondence address

for correspondence sent by the Ofﬁce as an ofﬁce

of indirect ﬁling. Where no such address has been

speciﬁed, the Ofﬁce will use as the correspondence

address the address of applicant’s appointed

representative (§ 1.1041) or, where no representative

is appointed, the address as speciﬁed in

Administrative Instruction 302.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

R-266January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1041

TRANSMITTAL OF INTERNATIONAL

DESIGN APPLICATION TO THE

INTERNATIONAL BUREAU

§ 1.1045 Procedures for transmittal of

international design application to the

International Bureau.

(a) Subject to paragraph (b) of this section and

payment of the transmittal fee set forth in §

1.1031(a), transmittal of the international design

application to the International Bureau shall be made

by the Ofﬁce as provided by Rule 13(1). At the same

time as it transmits the international design

application to the International Bureau, the Ofﬁce

shall notify the International Bureau of the date on

which it received the application. The Ofﬁce shall

also notify the applicant of the date on which it

received the application and of the transmittal of the

international design application to the International

Bureau.

(b) No copy of an international design

application may be transmitted to the International

Bureau, a foreign designated ofﬁce, or other foreign

authority by the Ofﬁce or the applicant, unless the

applicable requirements of part 5 of this chapter

have been satisﬁed.

application has been effected under paragraph (a)

of this section, except for matters properly before

the United States Patent and Trademark Ofﬁce as

an ofﬁce of indirect ﬁling or as a designated ofﬁce,

all further correspondence concerning the

application should be sent directly to the

International Bureau. The United States Patent and

Trademark Ofﬁce will generally not forward

communications to the International Bureau received

after transmittal of the application to the

International Bureau. Any reply to an invitation sent

to the applicant by the International Bureau must

be ﬁled directly with the International Bureau, and

not with the Ofﬁce, to avoid abandonment or other

loss of rights under Article 8.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

RELIEF FROM PRESCRIBED TIME

LIMITS; CONVERSION TO A DESIGN

APPLICATION UNDER 35 U.S.C.

CHAPTER 16

§ 1.1051 Relief from prescribed time limits.

(a) If the delay in an applicant’s failure to act

within prescribed time limits under the Hague

Agreement in connection with requirements

pertaining to an international design application was

unintentional, a petition may be ﬁled pursuant to

this section to excuse the failure to act as to the

United States. A grantable petition pursuant to this

section must be accompanied by:

(1) A copy of any invitation sent from the

International Bureau setting a prescribed time limit

for which applicant failed to timely act;

(2) The reply required under paragraph (c)

of this section, unless previously ﬁled;

(3) The fee as set forth in § 1.17(m);

(4) A certiﬁed copy of the originally ﬁled

international design application, unless a copy of

the international design application was previously

communicated to the Ofﬁce from the International

Bureau or the international design application was

ﬁled with the Ofﬁce as an ofﬁce of indirect ﬁling,

and a translation thereof into the English language

if it was ﬁled in another language;

(5) A statement that the entire delay in ﬁling

the required reply from the due date for the reply

until the ﬁling of a grantable petition pursuant to

this paragraph was unintentional. The Director may

require additional information where there is a

question whether the delay was unintentional; and

(6) A terminal disclaimer (and fee as set

forth in § 1.20(d)) required pursuant to paragraph

(d) of this section.

(b) Any request for reconsideration or review

of a decision refusing to excuse the applicant’s

failure to act within prescribed time limits in

connection with requirements pertaining to an

international design application upon petition ﬁled

pursuant to this section, to be considered timely,

must be ﬁled within two months of the decision

refusing to excuse or within such time as set in the

decision. Unless a decision indicates otherwise, this

time period may be extended under the provisions

of § 1.136.

January 2018R-267

§ 1.1051CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) The ﬁling of a continuing application. If

the international design application has not been

subject to international registration, the reply must

also include a grantable petition under § 1.1023(b)

to accord the international design application a ﬁling

date; or

(2) A grantable petition under § 1.1052,

where the international design application was ﬁled

with the Ofﬁce as an ofﬁce of indirect ﬁling.

(d) Terminal disclaimer. Any petition pursuant

to this section must be accompanied by a terminal

disclaimer and fee as set forth in § 1.321 dedicating

to the public a terminal part of the term of any patent

granted thereon equivalent to the period beginning

on the due date for the reply for which applicant

failed to timely act and ending on the date of ﬁling

of the reply required under paragraph (c) of this

section and must also apply to any patent granted

on a continuing design application that contains a

speciﬁc reference under 35 U.S.C. 120, 121, 365(c)

or 386(c) to the application for which relief under

this section is sought.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1052 Conversion to a design application

under 35 U.S.C. chapter 16.

(a) An international design application

designating the United States ﬁled with the Ofﬁce

as an ofﬁce of indirect ﬁling and meeting the

requirements under § 1.53(b) for a ﬁling date for an

application for a design patent may, on petition

under this section, be converted to an application

for a design patent under § 1.53(b) and accorded a

ﬁling date as provided therein. A petition under this

section must be accompanied by the fee set forth in

§ 1.17(t) and be ﬁled prior to publication of the

international registration under Article 10(3). The

conversion of an international design application to

an application for a design patent under § 1.53(b)

will not entitle applicant to a refund of the

transmittal fee or any fee forwarded to the

International Bureau, or the application of any such

fee toward the ﬁling fee, or any other fee, for the

application for a design patent under § 1.53(b). The

application for a design patent resulting from

conversion of an international design application

must also include the basic ﬁling fee (§ 1.16(b)),

the search fee (§ 1.16(l)), the examination fee (§

1.16(p)), the inventor’s oath or declaration (§ 1.63

or 1.64), and a surcharge if required by § 1.16(f).

(b) An international design application will be

converted to an application for a design patent under

§ 1.53(b) if a decision on petition under this section

is granted prior to transmittal of the international

design application to the International Bureau

pursuant to § 1.1045. Otherwise, a decision granting

a petition under this section will be effective to

convert the international design application to an

application for a design patent under § 1.53(b) only

for purposes of the designation of the United States.

granted in an abandoned international design

application absent a grantable petition under §

1.1051.

(d) An international design application

converted under this section is subject to the

regulations applicable to a design application ﬁled

under 35 U.S.C. chapter 16.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

NATIONAL PROCESSING OF

INTERNATIONAL DESIGN

APPLICATIONS

§ 1.1061 Rules applicable.

(a) The rules relating to applications for patents

for other inventions or discoveries are also

applicable to international design applications

designating the United States, except as otherwise

provided in this chapter or required by the Articles

or Regulations.

(b) The provisions of § 1.74, § 1.84, except for

§ 1.84(c), and §§ 1.152 through 1.154 shall not apply

to international design applications.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1062 Examination.

(a) Examination. The Ofﬁce shall make an

examination pursuant to title 35, United States Code,

of an international design application designating

the United States.

R-268January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1052

(b) Timing. For each international design

application to be examined under paragraph (a) of

this section, the Ofﬁce shall, subject to Rule

18(1)(c)(ii), send to the International Bureau within

12 months from the publication of the international

registration under Rule 26(3) a notiﬁcation of refusal

(§ 1.1063) where it appears that the applicant is not

entitled to a patent under the law with respect to any

industrial design that is the subject of the

international registration.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1063 Notiﬁcation of Refusal.

(a) A notiﬁcation of refusal shall contain or

indicate:

(1) The number of the international

registration;

(2) The grounds on which the refusal is

based;

(3) A copy of a reproduction of the earlier

industrial design and information concerning the

earlier industrial design, where the grounds of

refusal refer to similarity with an industrial design

that is the subject of an earlier application or

registration;

(4) Where the refusal does not relate to all

the industrial designs that are the subject of the

international registration, those to which it relates

or does not relate; and

(5) A time period for reply under §§ 1.134

and 1.136, where a reply to the notiﬁcation of refusal

is required.

(b) Any reply to the notiﬁcation of refusal must

be ﬁled directly with the Ofﬁce and not through the

International Bureau. The requirements of § 1.111

shall apply to a reply to a notiﬁcation of refusal.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1064 One independent and distinct

design.

(a) Only one independent and distinct design

may be claimed in a nonprovisional international

design application.

(b) If the requirements under paragraph (a) of

this section are not satisﬁed, the examiner shall in

the notiﬁcation of refusal or other Ofﬁce action

require the applicant in the reply to that action to

elect one independent and distinct design for which

prosecution on the merits shall be restricted. Such

requirement will normally be made before any action

on the merits but may be made at any time before

the ﬁnal action. Review of any such requirement is

provided under §§ 1.143 and 1.144.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1065 Corrections and other changes in

the International Register.

(a) The effects of any correction in the

International Register by the International Bureau

pursuant to Rule 22 in a pending nonprovisional

international design application shall be decided by

the Ofﬁce in accordance with the merits of each

situation, subject to such other requirements as may

be imposed. A patent issuing from an international

design application may only be corrected in

accordance with the provisions of title 35, United

States Code, for correcting patents. Any correction

under Rule 22 recorded by the International Bureau

with respect to an abandoned nonprovisional

international design application will generally not

be acted upon by the Ofﬁce and shall not be given

effect unless otherwise indicated by the Ofﬁce.

(b) A recording of a partial change in ownership

in the International Register pursuant to Rule 21(7)

concerning a transfer of less than all designs shall

not have effect in the United States.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1066 Correspondence address for a

nonprovisional international design

application.

(a) Unless the correspondence address is

changed in accordance with § 1.33(a), the Ofﬁce

will use as the correspondence address in a

nonprovisional international design application the

address according to the following order:

(1) The correspondence address under §

1.1042;

January 2018R-269

§ 1.1066CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(2) The address of applicant’s representative

identiﬁed in the publication of the international

registration; and

(3) The address of the applicant identiﬁed

in the publication of the international registration.

(b) Reference in the rules to the correspondence

address set forth in § 1.33(a) shall be construed to

include a reference to this section for a

nonprovisional international design application.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1067 Title, description, and inventor’s

oath or declaration.

(a) The title of the design must designate the

particular article. Where a nonprovisional

international design application does not contain a

title of the design, the Ofﬁce may establish a title.

No description, other than a reference to the

drawing, is ordinarily required in a nonprovisional

international design application.

(b) An international design application

designating the United States must include the

inventor’s oath or declaration. See § 1.1021(d). If

the applicant is notiﬁed in a notice of allowability

that an oath or declaration in compliance with §

1.63, or substitute statement in compliance with §

1.64, executed by or with respect to each named

inventor has not been ﬁled, the applicant must ﬁle

each required oath or declaration in compliance with

§ 1.63, or substitute statement in compliance with

§ 1.64, no later than the date on which the issue fee

is paid to avoid abandonment. This time period is

not extendable under § 1.136 (see § 1.136(c)).

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1068 Statement of grant of protection.

Upon issuance of a patent on an international design

application designating the United States, the Ofﬁce

may send to the International Bureau a statement to

the effect that protection is granted in the United

States to those industrial design or designs that are

the subject of the international registration and

covered by the patent.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1070 Notiﬁcation of Invalidation.

(a) Where a design patent that was granted from

an international design application is invalidated in

the United States, and the invalidation is no longer

subject to any review or appeal, the patentee shall

inform the Ofﬁce.

(b) After receiving a notiﬁcation of invalidation

under paragraph (a) of this section or through other

means, the Ofﬁce will notify the International

Bureau in accordance with Hague Rule 20.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

§ 1.1071 Grant of protection for an

industrial design only upon issuance of a

patent.

A grant of protection for an industrial design that is

the subject of an international registration shall only

arise in the United States through the issuance of a

patent pursuant to 35 U.S.C. 389(d) or 171, and in

accordance with 35 U.S.C. 153.

[Added, 80 FR 17918, Apr. 2, 2015, effective May

13, 2015]

PART 3 — ASSIGNMENT, RECORDING AND

RIGHTS OF ASSIGNEE

Sec.

3.1 Deﬁnitions.

DOCUMENTS ELIGIBLE FOR RECORDING

Sec.

3.11 Documents which will be recorded.

3.16 Assignability of trademarks prior to ﬁling

an allegation of use.

REQUIREMENTS FOR RECORDING

3.21 Identiﬁcation of patents and patent

applications.

3.24 Requirements for documents and cover

sheets relating to patents and patent

applications.

3.25 Recording requirements for trademark

applications and registrations.

3.26 English language requirement.

R-270January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1067

3.27 Mailing address for submitting documents

to be recorded.

3.28 Requests for recording.

COVER SHEET REQUIREMENTS

3.31 Cover sheet content.

3.34 Correction of cover sheet errors.

FEES

3.41 Recording fees.

DATE AND EFFECT OF RECORDING

3.51 Recording date.

3.54 Effect of recording.

3.56 Conditional assignments.

3.58 Governmental registers.

DOMESTIC REPRESENTATIVE

3.61 Domestic representative.

ACTION TAKEN BY ASSIGNEE

3.71 Prosecution by assignee.

3.71 (pre-AIA) Prosecution by assignee.

3.73 Establishing right of assignee to take

action.

3.73 (pre-AIA) Establishing right of assignee

to take action.

ISSUANCE TO ASSIGNEE

3.81 Issue of patent to assignee.

3.85 Issue of registration to assignee.

§ 3.1 Deﬁnitions.

For purposes of this part, the following deﬁnitions

shall apply:

Application means a national application for patent,

an international patent application that designates

the United States of America, an international design

application that designates the United States of

America, or an application to register a trademark

under section 1 or 44 of the Trademark Act, 15

U.S.C. 1051, or 15 U.S.C. 1126, unless otherwise

indicated.

Assignment means a transfer by a party of all or

part of its right, title and interest in a patent, patent

application, registered mark or a mark for which an

application to register has been ﬁled.

Document means a document which a party requests

to be recorded in the Ofﬁce pursuant to § 3.11 and

which affects some interest in an application, patent,

or registration.

Ofﬁce means the United States Patent and

Trademark Ofﬁce.

Recorded document means a document which has

been recorded in the Ofﬁce pursuant to§ 3.11.

Registration means a trademark registration issued

by the Ofﬁce.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 69 FR 29865, May 26, 2004, effective

June 25, 2004; deﬁnition of "Application" revised, 80

FR 17918, Apr. 2, 2015, effective May 13, 2015]

DOCUMENTS ELIGIBLE FOR

RECORDING

§ 3.11 Documents which will be recorded.

(a) Assignments of applications, patents, and

registrations, and other documents relating to

interests in patent applications and patents,

accompanied by completed cover sheets as speciﬁed

in § 3.28 and § 3.31, will be recorded in the Ofﬁce.

Other documents, accompanied by completed cover

sheets as speciﬁed in § 3.28 and § 3.31, affecting

title to applications, patents, or registrations, will

be recorded as provided in this part or at the

discretion of the Director.

(b) Executive Order 9424 of February 18, 1944

(9 FR 1959, 3 CFR 1943-1948 Comp., p. 303)

requires the several departments and other executive

agencies of the Government, including

Government-owned or Government-controlled

corporations, to forward promptly to the Director

for recording all licenses, assignments, or other

interests of the Government in or under patents or

patent applications. Assignments and other

documents affecting title to patents or patent

applications and documents not affecting title to

January 2018R-271

§ 3.11CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

patents or patent applications required by Executive

Order 9424 to be ﬁled will be recorded as provided

in this part.

a joint research agreement will also be recorded as

provided in this part.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; para. (c) added, 70 FR 1818, Jan.

11, 2005, effective Dec. 10, 2004; para. (c) revised, 70

FR 54259, Sept. 14, 2005, effective Sept. 14, 2005; para.

(a) revised, 78 FR 62368, Oct. 21, 2013, effective Dec.

18, 2013]

§ 3.16 Assignability of trademarks prior to

ﬁling an allegation of use.

Before an allegation of use under either 15 U.S.C.

1051(c) or 15 U.S.C. 1051(d) is ﬁled, an applicant

may only assign an application to register a mark

under 15 U.S.C. 1051(b) to a successor to the

applicant’s business, or portion of the business to

which the mark pertains, if that business is ongoing

and existing.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 64 FR 48900, Sept. 8, 1999, effective

Oct. 30, 1999]

REQUIREMENTS FOR RECORDING

§ 3.21 Identiﬁcation of patents and patent

applications.

An assignment relating to a patent must identify the

patent by the patent number. An assignment relating

to a national patent application must identify the

national patent application by the application

number (consisting of the series code and the serial

number; e.g., 07/123,456). An assignment relating

to an international patent application which

designates the United States of America must

identify the international application by the

international application number; e.g.,

PCT/US2012/012345. An assignment relating to an

international design application which designates

the United States of America must identify the

international design application by the international

registration number or by the U.S. application

number assigned to the international design

application. If an assignment of a patent application

ﬁled under § 1.53(b) of this chapter is executed

concurrently with, or subsequent to, the execution

of the patent application, but before the patent

application is ﬁled, it must identify the patent

application by the name of each inventor and the

title of the invention so that there can be no mistake

as to the patent application intended. If an

assignment of a provisional application under §

1.53(c) of this chapter is executed before the

provisional application is ﬁled, it must identify the

provisional application by the name of each inventor

and the title of the invention so that there can be no

mistake as to the provisional application intended.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; amended, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; revised, 69 FR 29865, May 26,

2004, effective June 25, 2004; revised, 80 FR 17918,

Apr. 2, 2015, effective May 13, 2015]

§ 3.24 Requirements for documents and

cover sheets relating to patents and patent

applications.

(a) For electronic submissions: Either a copy

of the original document or an extract of the original

document may be submitted for recording. All

documents must be submitted as digitized images

in Tagged Image File Format (TIFF) or another form

as prescribed by the Director. When printed to a

paper size of either 21.6 by 27.9 cm (8 1/2 inches

by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the

document must be legible and a 2.5 cm (one-inch)

margin must be present on all sides.

(b) For paper or facsimile submissions : Either

a copy of the original document or an extract of the

original document must be submitted for recording.

Only one side of each page may be used. The paper

size must be either 21.6 by 27.9 cm (8 1/2 inches

by 11 inches) or 21.0 by 29.7 cm (DIN size A4),

and in either case, a 2.5 cm (one-inch) margin must

be present on all sides. For paper submissions, the

paper used should be ﬂexible, strong white,

non-shiny, and durable. The Ofﬁce will not return

recorded documents, so original documents must

not be submitted for recording.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; heading revised, 64 FR 48900, Sept. 8, 1999,

R-272January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 3.16

effective Oct. 30, 1999; revised, 69 FR 29865, May 26,

2004, effective June 25, 2004; revised, 69 FR 29865,

May 26, 2004, effective June 25, 2004]

§ 3.25 Recording requirements for

trademark applications and registrations.

(a) Documents affecting title. To record

documents affecting title to a trademark application

or registration, a legible cover sheet (see § 3.31)

and one of the following must be submitted:

(1) A copy of the original document;

(2) A copy of an extract from the document

evidencing the effect on title; or

(3) A statement signed by both the party

conveying the interest and the party receiving the

interest explaining how the conveyance affects title.

(b) Name changes. Only a legible cover sheet

is required (See § 3.31).

submissions : All documents must be submitted as

digitized images in Tagged Image File Format

(TIFF) or another form as prescribed by the Director.

When printed to a paper size of either 21.6 by 27.9

cm (8 1/2 by 11 inches) or 21.0 by 29.7 cm (DIN

size A4), a 2.5 cm (one-inch) margin must be present

on all sides.

(2) For paper or facsimile submissions :

All documents should be submitted on white and

non-shiny paper that is either 8 1/2 by 11 inches

(21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm)

with a one-inch (2.5 cm) margin on all sides in either

case. Only one side of each page may be used. The

Ofﬁce will not return recorded documents, so

original documents should not be submitted for

recording.

[Added, 64 FR 48900, Sept. 8, 1999, effective Oct.

30, 1999; revised, 69 FR 29865, May 26, 2004, effective

June 25, 2004]

§ 3.26 English language requirement.

The Ofﬁce will accept and record non-English

language documents only if accompanied by an

English translation signed by the individual making

the translation.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997]

§ 3.27 Mailing address for submitting

documents to be recorded.

Documents and cover sheets submitted by mail for

recordation should be addressed to Mail Stop

Assignment Recordation Services, Director of the

United States Patent and Trademark Ofﬁce, P.O.

Box 1450, Alexandria, Virginia 22313-1450, unless

they are ﬁled together with new applications.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003; revised, 69 FR 29865, May

26, 2004, effective June 25, 2004]

§ 3.28 Requests for recording.

Each document submitted to the Ofﬁce for recording

must include a single cover sheet (as speciﬁed in §

3.31) referring either to those patent applications

and patents, or to those trademark applications and

registrations, against which the document is to be

recorded. If a document to be recorded includes

interests in, or transactions involving, both patents

and trademarks, then separate patent and trademark

cover sheets, each accompanied by a copy of the

document to be recorded, must be submitted. If a

document to be recorded is not accompanied by a

completed cover sheet, the document and the

incomplete cover sheet will be returned pursuant to

§ 3.51 for proper completion, in which case the

document and a completed cover sheet should be

resubmitted.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 64 FR 48900, Sept. 8, 1999, effective

Oct. 30, 1999; revised, 70 FR 56119, Sept. 26, 2005,

effective Nov. 25, 2005]

COVER SHEET REQUIREMENTS

§ 3.31 Cover sheet content.

(a) Each patent or trademark cover sheet

required by § 3.28 must contain:

January 2018R-273

§ 3.31CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) The name of the party conveying the

interest;

(2) The name and address of the party

receiving the interest;

(3) A description of the interest conveyed

or transaction to be recorded;

(4) Identiﬁcation of the interests involved:

(i) For trademark assignments and

trademark name changes: Each trademark

registration number and each trademark application

number, if known, against which the Ofﬁce is to

record the document. If the trademark application

number is not known, a copy of the application or

a reproduction of the trademark must be submitted,

along with an estimate of the date that the Ofﬁce

received the application; or

(ii) For any other document affecting title

to a trademark or patent application, registration or

patent: Each trademark or patent application number

or each trademark registration number or patent

against which the document is to be recorded, or an

indication that the document is ﬁled together with

a patent application;

(5) The name and address of the party to

whom correspondence concerning the request to

record the document should be mailed;

(6) The date the document was executed;

(7) The signature of the party submitting the

document. For an assignment document or name

change ﬁled electronically, the person who signs

the cover sheet must either:

(i) Place a symbol comprised of letters,

numbers, and/or punctuation marks between forward

slash marks (e.g. /Thomas O’Malley III/) in the

signature block on the electronic submission; or

(ii) Sign the cover sheet using some other

form of electronic signature speciﬁed by the

Director.

(8) For trademark assignments, the entity

and citizenship of the party receiving the interest.

In addition, if the party receiving the interest is a

domestic partnership or domestic joint venture, the

cover sheet must set forth the names, legal entities,

and national citizenship (or the state or country of

organization) of all general partners or active

members that compose the partnership or joint

venture.

(b) A cover sheet should not refer to both

patents and trademarks, since any information,

including information about pending patent

applications, submitted with a request for

recordation of a document against a trademark

application or trademark registration will become

public record upon recordation.

seeking to record a governmental interest as

provided by § 3.11(b) must:

(1) Indicate that the document relates to a

Government interest; and

(2) Indicate, if applicable, that the document

to be recorded is not a document affecting title (see

§ 3.41(b)).

(d) Each trademark cover sheet required by §

3.28 seeking to record a document against a

trademark application or registration should include,

in addition to the serial number or registration

number of the trademark, identiﬁcation of the

trademark or a description of the trademark, against

which the Ofﬁce is to record the document.

(e) Each patent or trademark cover sheet

required by § 3.28 should contain the number of

applications, patents or registrations identiﬁed in

the cover sheet and the total fee.

(f) Each trademark cover sheet should include

the citizenship of the party conveying the interest.

(g) The cover sheet required by § 3.28 seeking

to record a joint research agreement or an excerpt

of a joint research agreement as provided by §

3.11(c) must:

(1) Identify the document as a “joint research

agreement” (in the space provided for the description

of the interest conveyed or transaction to be recorded

if using an Ofﬁce-provided form);

(2) Indicate the name of the owner of the

application or patent (in the space provided for the

name and address of the party receiving the interest

if using an Ofﬁce-provided form);

(3) Indicate the name of each other party to

the joint research agreement party (in the space

provided for the name of the party conveying the

interest if using an Ofﬁce-provided form); and

(4) Indicate the date the joint research

agreement was executed.

R-274January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 3.31

(h) The assignment cover sheet required by §

3.28 for a patent application or patent will be

satisﬁed by the Patent Law Treaty Model

International Request for Recordation of Change in

Applicant or Owner Form, Patent Law Treaty Model

International Request for Recordation of a License/

Cancellation of the Recordation of a License Form,

Patent Law Treaty Model Certiﬁcate of Transfer

Form or Patent Law Treaty Model International

Request for Recordation of a Security Interest/

Cancellation of the Recordation of a Security

Interest Form, as applicable, except where the

assignment is also an oath or declaration under §

1.63 of this chapter. An assignment cover sheet

required by § 3.28 must contain a conspicuous

indication of an intent to utilize the assignment as

an oath or declaration under § 1.63 of this chapter.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; para. (c) added, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; paras. (a)-(b) revised, paras.

(d)-(e) added, 64 FR 48900, Sept. 8, 1999, effective Oct.

30, 1999; para. (a)(7) deleted and para. (a)(8) redesignated

as para. (a)(7), 67 FR 79520, Dec. 30, 2002, effective

Dec. 30, 2002; paras. (a)(7) & (c)(1) revised and para.

(f) added, 69 FR 29865, May 26, 2004, effective June

25, 2004; para (g) added, 70 FR 1818, Jan. 11, 2005,

effective Dec. 10, 2004; para. (a)(7)(i) revised, 70 FR

56119, Sept. 26, 2005, effective Nov. 25, 2005; para.

(a)(8) added and para. (f) revised, 73 FR 67759, Nov. 17,

2008, effective Jan. 16, 2009; para. (h) added, 77 FR

48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (h)

revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18,

2013]

§ 3.34 Correction of cover sheet errors.

(a) An error in a cover sheet recorded pursuant

to § 3.11 will be corrected only if:

(1) The error is apparent when the cover

sheet is compared with the recorded document to

which it pertains and

(2) A corrected cover sheet is ﬁled for

recordation.

(b) The corrected cover sheet must be

accompanied by a copy of the document originally

submitted for recording and by the recording fee as

set forth in § 3.41.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; para. (b) revised, 69 FR 29865, May 26, 2004,

effective June 25, 2004]

FEES

§ 3.41 Recording fees.

(a) All requests to record documents must be

accompanied by the appropriate fee. Except as

provided in paragraph (b) of this section, a fee is

required for each application, patent and registration

against which the document is recorded as identiﬁed

in the cover sheet. The recording fee is set in §

1.21(h) of this chapter for patents and in § 2.6(b)(6)

of this chapter for trademarks.

(b) No fee is required for each patent application

and patent against which a document required by

Executive Order 9424 is to be ﬁled if:

(1) The document does not affect title and

is so identiﬁed in the cover sheet (see § 3.31(c)(2));

and

(2) The document and cover sheet are either:

Faxed or electronically submitted as prescribed by

the Director, or mailed to the Ofﬁce in compliance

with § 3.27.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; para. (a) amended, 63 FR 48081, Sept. 9,

1998, effective October 9, 1998; para. (a) corrected, 63

FR 52158, Sept. 10, 1998; para. (b)(2) revised, 69 FR

29865, May 26, 2004, effective June 25, 2004]

DATE AND EFFECT OF RECORDING

§ 3.51 Recording date.

The date of recording of a document is the date the

document meeting the requirements for recording

set forth in this part is ﬁled in the Ofﬁce. A

document which does not comply with the

identiﬁcation requirements of § 3.21 will not be

recorded. Documents not meeting the other

requirements for recording, for example, a document

submitted without a completed cover sheet or

without the required fee, will be returned for

correction to the sender where a correspondence

address is available. The returned papers, stamped

with the original date of receipt by the Ofﬁce, will

be accompanied by a letter which will indicate that

if the returned papers are corrected and resubmitted

to the Ofﬁce within the time speciﬁed in the letter,

January 2018R-275

§ 3.51CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

the Ofﬁce will consider the original date of ﬁling

of the papers as the date of recording of the

document. The procedure set forth in § 1.8 or § 1.10

of this chapter may be used for resubmissions of

returned papers to have the beneﬁt of the date of

deposit in the United States Postal Service. If the

returned papers are not corrected and resubmitted

within the speciﬁed period, the date of ﬁling of the

corrected papers will be considered to be the date

of recording of the document. The speciﬁed period

to resubmit the returned papers will not be extended.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997]

§ 3.54 Effect of recording.

The recording of a document pursuant to § 3.11 is

not a determination by the Ofﬁce of the validity of

the document or the effect that document has on the

title to an application, a patent, or a registration.

When necessary, the Ofﬁce will determine what

effect a document has, including whether a party

has the authority to take an action in a matter

pending before the Ofﬁce.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992]

§ 3.56 Conditional assignments.

Assignments which are made conditional on the

performance of certain acts or events, such as the

payment of money or other condition subsequent,

if recorded in the Ofﬁce, are regarded as absolute

assignments for Ofﬁce purposes until cancelled with

the written consent of all parties or by the decree of

a court of competent jurisdiction. The Ofﬁce does

not determine whether such conditions have been

fulﬁlled.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992]

§ 3.58 Governmental registers.

(a) The Ofﬁce will maintain a Departmental

to be recorded by Executive Order 9424. This

Departmental Register will not be open to public

inspection but will be available for examination and

inspection by duly authorized representatives of the

Government. Governmental interests recorded on

the Departmental Register will be available for

public inspection as provided in § 1.12.

(b) The Ofﬁce will maintain a Secret Register

to record governmental interests required to be

recorded by Executive Order 9424. Any instrument

to be recorded will be placed on this Secret Register

at the request of the department or agency

submitting the same. No information will be given

concerning any instrument in such record or register,

and no examination or inspection thereof or of the

index thereto will be permitted, except on the written

authority of the head of the department or agency

which submitted the instrument and requested

secrecy, and the approval of such authority by the

Director. No instrument or record other than the one

speciﬁed may be examined, and the examination

must take place in the presence of a designated

ofﬁcial of the Patent and Trademark Ofﬁce. When

the department or agency which submitted an

instrument no longer requires secrecy with respect

to that instrument, it must be recorded anew in the

Departmental Register.

[Added, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; para. (b) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003]

DOMESTIC REPRESENTATIVE

§ 3.61 Domestic representative.

If the assignee of a patent, patent application,

trademark application or trademark registration is

not domiciled in the United States, the assignee may

designate a domestic representative in a document

ﬁled in the United States Patent and Trademark

Ofﬁce. The designation should state the name and

address of a person residing within the United States

on whom may be served process or notice of

proceedings affecting the application, patent or

registration or rights thereunder.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 67 FR 79520, Dec. 30, 2002, effective

Dec. 30, 2002]

R-276January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 3.54

ACTION TAKEN BY ASSIGNEE

§ 3.71 Prosecution by assignee.

[Editor Note: Paras. (a) - (c) below are applicable

only to patent applications ﬁled under 35 U.S.C. 111(a)

or 363 on or after Sept. 16, 2012*]

(a) Patents—conducting of prosecution. One

or more assignees as deﬁned in paragraph (b) of this

section may conduct prosecution of a national patent

application as the applicant under § 1.46 of this title,

or conduct prosecution of a supplemental

examination or reexamination proceeding, to the

exclusion of the inventor or previous applicant or

patent owner. Conﬂicts between purported assignees

are handled in accordance with § 3.73(c)(3).

(b) Patents—assignee(s) who can prosecute.

The assignee(s) who may conduct either the

prosecution of a national application for patent as

the applicant under § 1.46 of this title or a

supplemental examination or reexamination

proceeding are:

(1) A single assignee. An assignee of the

entire right, title and interest in the application or

patent, or

(2) Partial assignee(s) together or with

inventor(s). All partial assignees, or all partial

assignees and inventors who have not assigned their

right, title and interest in the application or patent,

who together own the entire right, title and interest

in the application or patent. A partial assignee is any

assignee of record having less than the entire right,

title and interest in the application or patent. The

word "assignee" as used in this chapter means with

respect to patent matters the single assignee of the

entire right, title and interest in the application or

patent if there is such a single assignee, or all of the

partial assignees, or all of the partial assignee and

inventors who have not assigned their interest in the

application or patent, who together own the entire

right, title and interest in the application or patent.

becomes of record as the applicant in a national

patent application under § 1.46 of this title, and in

a supplemental examination or reexamination

proceeding, by ﬁling a statement in compliance with

§ 3.73(c) that is signed by a party who is authorized

to act on behalf of the assignee.

(d) Trademarks. The assignee of a trademark

application or registration may prosecute a

trademark application, submit documents to

maintain a trademark registration, or ﬁle papers

against a third party in reliance on the assignee’s

trademark application or registration, to the

exclusion of the original applicant or previous

assignee. The assignee must establish ownership in

compliance with § 3.73(b).

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000; paras. (a)-(c) revised, 77 FR 48776, Aug.

14, 2012, effective Sept. 16, 2012]

[*The changes to paras. (a)-(c) effective Sept. 16,

2012 are applicable only to patent applications ﬁled under

35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See

§ 3.71 (pre-AIA) for the rule otherwise in effect.]

§ 3.71 (pre-AIA) Prosecution by assignee.

[Editor Note: Paras. (a) - (c) below are not

applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012*]

(a) Patents — conducting of prosecution. One

or more assignees as deﬁned in paragraph (b) of this

section may, after becoming of record pursuant to

paragraph (c) of this section, conduct prosecution

of a national patent application or a reexamination

proceeding to the exclusion of either the inventive

entity, or the assignee(s) previously entitled to

conduct prosecution.

(b) Patents — assignee(s) who can prosecute.

The assignee(s) who may conduct either the

prosecution of a national application for patent or a

reexamination proceeding are:

(1) A single assignee. An assignee of the

entire right, title and interest in the application or

patent being reexamined who is of record, or

(2) Partial assignee(s) together or with

inventor(s). All partial assignees, or all partial

assignees and inventors who have not assigned their

right, title and interest in the application or patent

being reexamined, who together own the entire right,

title and interest in the application or patent being

reexamined. A partial assignee is any assignee of

record having less than the entire right, title and

interest in the application or patent being

reexamined.

January 2018R-277

§ 3.71

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

becomes of record either in a national patent

application or a reexamination proceeding by ﬁling

a statement in compliance with § 3.73(b) that is

signed by a party who is authorized to act on behalf

of the assignee.

(d) Trademarks. The assignee of a trademark

application or registration may prosecute a

trademark application, submit documents to

maintain a trademark registration, or ﬁle papers

against a third party in reliance on the assignee’s

trademark application or registration, to the

exclusion of the original applicant or previous

assignee. The assignee must establish ownership in

compliance with § 3.73(b).

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; revised, 65 FR 54604, Sept. 8, 2000, effective

Nov. 7, 2000]

[*See § 3.71 for more information and for paras.

(a)-(c) applicable to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012]

§ 3.73 Establishing right of assignee to take

action.

[Editor Note: Applicable only to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after September

16, 2012*]

(a) The original applicant is presumed to be the

owner of an application for an original patent, and

any patent that may issue therefrom, unless there is

an assignment. The original applicant is presumed

to be the owner of a trademark application or

registration, unless there is an assignment.

(b) In order to request or take action in a

trademark matter, the assignee must establish its

ownership of the trademark property of paragraph

(a) of this section to the satisfaction of the Director.

The establishment of ownership by the assignee may

be combined with the paper that requests or takes

the action. Ownership is established by submitting

to the Ofﬁce a signed statement identifying the

assignee, accompanied by either:

(1) Documentary evidence of a chain of title

from the original owner to the assignee (e.g., copy

of an executed assignment). The documents

submitted to establish ownership may be required

to be recorded pursuant to § 3.11 in the assignment

records of the Ofﬁce as a condition to permitting

the assignee to take action in a matter pending before

the Ofﬁce; or

(2) A statement specifying where

documentary evidence of a chain of title from the

original owner to the assignee is recorded in the

assignment records of the Ofﬁce (e.g., reel and

frame number).

(c)(1) In order to request or take action in a

patent matter, an assignee who is not the original

applicant must establish its ownership of the patent

property of paragraph (a) of this section to the

satisfaction of the Director. The establishment of

ownership by the assignee may be combined with

the paper that requests or takes the action.

Ownership is established by submitting to the Ofﬁce

a signed statement identifying the assignee,

accompanied by either:

(i) Documentary evidence of a chain of

title from the original owner to the assignee (e.g.,

copy of an executed assignment). The submission

of the documentary evidence must be accompanied

by a statement afﬁrming that the documentary

evidence of the chain of title from the original owner

to the assignee was or concurrently is being

submitted for recordation pursuant to § 3.11; or

(ii) A statement specifying where

documentary evidence of a chain of title from the

original owner to the assignee is recorded in the

assignment records of the Ofﬁce (e.g., reel and

frame number).

(2) If the submission is by an assignee of

less than the entire right, title and interest (e.g., more

than one assignee exists) the Ofﬁce may refuse to

accept the submission as an establishment of

ownership unless:

(i) Each assignee establishes the extent

(by percentage) of its ownership interest, so as to

account for the entire right, title and interest in the

application or patent by all parties including

inventors; or

(ii) Each assignee submits a statement

identifying the parties including inventors who

together own the entire right, title and interest and

stating that all the identiﬁed parties own the entire

right, title and interest.

(3) If two or more purported assignees ﬁle

conﬂicting statements under paragraph (c)(1) of this

section, the Director will determine which, if any,

R-278January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 3.73

purported assignee will be permitted to control

prosecution of the application.

(d) The submission establishing ownership

under paragraph (b) or (c) of this section must show

that the person signing the submission is a person

authorized to act on behalf of the assignee by:

(1) Including a statement that the person

signing the submission is authorized to act on behalf

of the assignee;

(2) Being signed by a person having apparent

authority to sign on behalf of the assignee; or

(3) For patent matters only, being signed by

a practitioner of record.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; para. (b) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para.

(b)(1)(i) revised, 70 FR 56119, Sept. 26, 2005, effective

Nov. 25, 2005; revised, 77 FR 48776, Aug. 14, 2012,

effective Sept. 16, 2012]

[*The changes to § 3.73 effective Sept. 16, 2012

are applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

3.73 (pre-AIA) for the rule otherwise in effect.]

§ 3.73 (pre-AIA) Establishing right of

assignee to take action.

[Editor Note: Not applicable to patent applications

ﬁled under 35 U.S.C. 111(a) or 363 on or after Sept. 16,

2012*]

(a) The inventor is presumed to be the owner of

a patent application, and any patent that may issue

therefrom, unless there is an assignment. The

original applicant is presumed to be the owner of a

trademark application or registration, unless there

is an assignment.

(b)(1) In order to request or take action in a

patent or trademark matter, the assignee must

establish its ownership of the patent or trademark

property of paragraph (a) of this section to the

satisfaction of the Director. The establishment of

ownership by the assignee may be combined with

the paper that requests or takes the action.

Ownership is established by submitting to the Ofﬁce

a signed statement identifying the assignee,

accompanied by either:

(i) Documentary evidence of a chain of

title from the original owner to the assignee (e.g.,

copy of an executed assignment). For trademark

matters only, the documents submitted to establish

ownership may be required to be recorded pursuant

to § 3.11 in the assignment records of the Ofﬁce as

a condition to permitting the assignee to take action

in a matter pending before the Ofﬁce. For patent

matters only, the submission of the documentary

evidence must be accompanied by a statement

afﬁrming that the documentary evidence of the chain

of title from the original owner to the assignee was

or concurrently is being submitted for recordation

pursuant to § 3.11; or

(ii) A statement specifying where

documentary evidence of a chain of title from the

original owner to the assignee is recorded in the

assignment records of the Ofﬁce (e.g., reel and

frame number).

(2) The submission establishing ownership

must show that the person signing the submission

is a person authorized to act on behalf of the

assignee by:

(i) Including a statement that the person

signing the submission is authorized to act on behalf

of the assignee; or

(ii) Being signed by a person having

apparent authority to sign on behalf of the assignee,

e.g., an ofﬁcer of the assignee.

(1) Establishment of ownership by the

assignee must be submitted prior to, or at the same

time as, the paper requesting or taking action is

submitted.

(2) If the submission under this section is by

an assignee of less than the entire right, title and

interest, such assignee must indicate the extent (by

percentage) of its ownership interest, or the Ofﬁce

may refuse to accept the submission as an

establishment of ownership.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; para. (b) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; para.

(b)(1)(i) revised, 70 FR 56119, Sept. 26, 2005, effective

Nov. 25, 2005.]

January 2018R-279

§ 3.73

(pre-AIA)

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

[*See § 3.73 for more information and for the rule

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

ISSUANCE TO ASSIGNEE

§ 3.81 Issue of patent to assignee.

(a) With payment of the issue fee: An

application may issue in the name of the assignee

consistent with the application’s assignment where

a request for such issuance is submitted with

payment of the issue fee, provided the assignment

has been previously recorded in the Ofﬁce. If the

assignment has not been previously recorded, the

request must state that the document has been ﬁled

for recordation as set forth in § 3.11.

(b) After payment of the issue fee : Any request

for issuance of an application in the name of the

assignee submitted after the date of payment of the

issue fee, and any request for a patent to be corrected

to state the name of the assignee, must state that the

assignment was submitted for recordation as set

forth in § 3.11 before issuance of the patent, and

must include a request for a certiﬁcate of correction

under § 1.323 of this chapter (accompanied by the

fee set forth in § 1.20(a)) and the processing fee set

forth in § 1.17(i) of this chapter.

assignee, together with one or more inventor, holds

the entire right, title, and interest in the application,

the patent may issue in the names of the assignee

and the inventor.

(2) If multiple assignees hold the entire right,

title, and interest to the exclusion of all the inventors,

the patent may issue in the names of the multiple

assignees.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992; amended, 60 FR 20195, Apr. 25, 1995, effective

June 8, 1995; revised, 65 FR 54604, Sept. 8, 2000,

effective Nov. 7, 2000; revised, 69 FR 29865, May 26,

2004, effective June 25, 2004]

§ 3.85 Issue of registration to assignee.

The certiﬁcate of registration may be issued to the

assignee of the applicant, or in a new name of the

applicant, provided that the party ﬁles a written

request in the trademark application by the time the

application is being prepared for issuance of the

certiﬁcate of registration, and the appropriate

document is recorded in the Ofﬁce. If the assignment

or name change document has not been recorded in

the Ofﬁce, then the written request must state that

the document has been ﬁled for recordation. The

address of the assignee must be made of record in

the application ﬁle.

[Added, 57 FR 29634, July 6, 1992, effective Sept.

4, 1992]

PART 4 — COMPLAINTS REGARDING

INVENTION PROMOTERS

Sec.

4.1 Complaints Regarding Invention

Promoters.

4.2 Deﬁnitions.

4.3 Submitting Complaints.

4.4 Invention Promoter Reply.

4.5 Notice by Publication.

4.6 Attorneys and Agents.

§ 4.1 Complaints Regarding Invention

Promoters.

These regulations govern the Patent and Trademark

Ofﬁce’s (Ofﬁce) responsibilities under the

Inventors’ Rights Act of 1999, which can be found

in the U.S. Code at 35 U.S.C. 297. The Act requires

the Ofﬁce to provide a forum for the publication of

complaints concerning invention promoters. The

Ofﬁce will not conduct any independent

investigation of the invention promoter. Although

the Act provides additional civil remedies for

persons injured by invention promoters, those

remedies must be pursued by the injured party

without the involvement of the Ofﬁce.

[Added, 65 FR 3127, Jan. 20, 2000, effective Jan.

28, 2000]

§ 4.2 Deﬁnitions.

(a) Invention Promoter means any person, ﬁrm,

partnership, corporation, or other entity who offers

to perform or performs invention promotion services

for, or on behalf of, a customer, and who holds itself

out through advertising in any mass media as

providing such services, but does not include—

R-280January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 3.81

(1) Any department or agency of the Federal

Government or of a State or local government;

(2) Any nonproﬁt, charitable, scientiﬁc, or

educational organization qualiﬁed under applicable

State law or described under section 170(b)(1)(A)

of the Internal Revenue Code of 1986;

(3) Any person or entity involved in the

evaluation to determine commercial potential of, or

offering to license or sell, a utility patent or a

previously ﬁled nonprovisional utility patent

application;

(4) Any party participating in a transaction

involving the sale of the stock or assets of a

business; or

(5) Any party who directly engages in the

business of retail sales of products or the distribution

of products.

(b) Customer means any individual who enters

into a contract with an invention promoter for

invention promotion services.

means a contract by which an invention promoter

undertakes invention promotion services for a

customer.

(d) Invention Promotion Services means the

procurement or attempted procurement for a

customer of a ﬁrm, corporation, or other entity to

develop and market products or services that include

the invention of the customer.

[Added, 65 FR 3127, Jan. 20, 2000, effective Jan.

28, 2000]

§ 4.3 Submitting Complaints.

(a) A person may submit a complaint concerning

an invention promoter with the Ofﬁce. A person

submitting a complaint should understand that the

complaint may be forwarded to the invention

promoter and may become publicly available. The

Ofﬁce will not accept any complaint that requests

that it be kept conﬁdential.

(b) A complaint must be clearly marked, or

otherwise identiﬁed, as a complaint under these

rules. The complaint must include:

(1) The name and address of the

complainant;

(2) The name and address of the invention

promoter;

(3) The name of the customer;

(4) The invention promotion services offered

or performed by the invention promoter;

(5) The name of the mass media in which

the invention promoter advertised providing such

services;

(6) An explanation of the relationship

between the customer and the invention promoter,

and

(7) A signature of the complainant.

action of the invention promoter about which the

person complains. Additionally, the complaint

should include names and addresses of persons

believed to be associated with the invention

promoter. Complaints, and any replies, must be

addressed to: Mail Stop 24, Commissioner for

Patents, P.O. Box 1450, Alexandria, Virginia

22313-1450.

(d) Complaints that do not provide the

information requested in paragraphs (b) and (c) of

this section will be returned. If complainant’s

address is not provided, the complaint will be

destroyed.

(e) No originals of documents should be

included with the complaint.

(f) A complaint can be withdrawn by the

complainant or the named customer at any time prior

to its publication.

[Para. (c) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

§ 4.4 Invention Promoter Reply.

(a) If a submission appears to meet the

requirements of a complaint, the invention promoter

named in the complaint will be notiﬁed of the

complaint and given 30 days to respond. The

invention promoter’s response will be made

available to the public along with the complaint. If

the invention promoter fails to reply within the

30-day time period set by the Ofﬁce, the complaint

will be made available to the public. Replies sent

after the complaint is made available to the public

will also be published.

January 2018R-281

§ 4.4CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(b) A response must be clearly marked, or

otherwise identiﬁed, as a response by an invention

promoter. The response must contain:

(1) The name and address of the invention

promoter;

(2) A reference to a complaint forwarded to

the invention promoter or a complaint previously

published;

(3) The name of the individual signing the

response; and

(4) The title or authority of the individual

signing the response.

[Added, 65 FR 3127, Jan. 20, 2000, effective Jan.

28, 2000]

§ 4.5 Notice by Publication.

If the copy of the complaint that is mailed to the

invention promoter is returned undelivered, then the

Ofﬁce will publish a Notice of Complaint Received

in the Ofﬁcial Gazette, the Federal Register, or on

the Ofﬁce’s Internet home page. The invention

promoter will be given 30 days from such notice to

submit a reply to the complaint. If the Ofﬁce does

not receive a reply from the invention promoter

within 30 days, the complaint alone will become

publicly available.

[Added, 65 FR 3127, Jan. 20, 2000, effective Jan.

28, 2000]

§ 4.6 Attorneys and Agents.

Complaints against registered patent attorneys and

agents will not be treated under this section, unless

a complaint fairly demonstrates that invention

promotion services are involved. Persons having

complaints about registered patent attorneys or

agents should contact the Ofﬁce of Enrollment and

Discipline at Mail Stop OED, Director of the United

States Patent and Trademark Ofﬁce, PO Box 1450,

Alexandria, Virginia 22313-1450, and the attorney

discipline section of the attorney’s state licensing

bar if an attorney is involved.

[Added, 65 FR 3127, Jan. 20, 2000, effective

Jan.28, 2000; revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

PART 5 — SECRECY OF CERTAIN

INVENTIONS AND LICENSES TO EXPORT

AND FILE APPLICATIONS IN FOREIGN

COUNTRIES

SECRECY

Sec.

5.1 Applications and correspondence involving

national security.

5.2 Secrecy order.

5.3 Prosecution of application under secrecy

orders; withholding patent.

5.4 Petition for rescission of secrecy order.

5.5 Permit to disclose or modiﬁcation of

secrecy order.

5.6 [Reserved]

5.7 [Reserved]

5.8 [Reserved]

LICENSES FOR FOREIGN EXPORTING AND FILING

5.11 License for ﬁling in, or exporting to, a

foreign country an application on an

invention made in the United States or

technical data relating thereto.

5.12 Petition for license.

5.13 Petition for license; no corresponding

application.

5.14 Petition for license; corresponding U.S.

application.

5.15 Scope of license.

5.16 [Reserved]

5.17 [Reserved]

5.18 Arms, ammunition, and implements of war.

5.19 Export of technical data.

5.20 Export of technical data relating to

sensitive nuclear technology.

5.25 Petition for retroactive license.

GENERAL

5.31 [Reserved]

5.32 [Reserved]

5.33 [Reserved]

R-282January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 4.5

SECRECY

§ 5.1 Applications and correspondence

involving national security.

(a) All correspondence in connection with this

part, including petitions, should be addressed to:

Mail Stop L&R, Commissioner for Patents, P.O.

Box 1450, Alexandria, Virginia 22313-1450.

(b) Deﬁnitions.

(1) Application as used in this part includes

provisional applications (§ 1.9(a)(2) of this chapter),

nonprovisional applications (§ 1.9(a)(3)),

international applications (§ 1.9(b)), or international

design applications (§ 1.9(n)).

(2) Foreign application as used in this part

includes, for ﬁling in a foreign country, foreign

patent ofﬁce, foreign patent agency, or international

agency (other than the United States Patent and

Trademark Ofﬁce acting as a Receiving Ofﬁce for

international applications (35 U.S.C. 361, § 1.412)

or as an ofﬁce of indirect ﬁling for international

design applications (35 U.S.C. 382, § 1.1002)) any

of the following: An application for patent,

international application, international design

application, or application for the registration of a

utility model, industrial design, or model.

thereto that are national security classiﬁed (see §

1.9(i) of this chapter) and contain authorized

national security markings (e.g., “Conﬁdential,”

“Secret” or “Top Secret”) are accepted by the Ofﬁce.

National security classiﬁed documents ﬁled in the

Ofﬁce must be either hand-carried to Licensing and

Review or mailed to the Ofﬁce in compliance with

paragraph (a) of this section.

(d) The applicant in a national security classiﬁed

patent application must obtain a secrecy order

pursuant to § 5.2(a). If a national security classiﬁed

patent application is ﬁled without a notiﬁcation

pursuant to § 5.2(a), the Ofﬁce will set a time period

within which either the application must be

declassiﬁed, or the application must be placed under

a secrecy order pursuant to § 5.2(a), or the applicant

must submit evidence of a good faith effort to obtain

a secrecy order pursuant to § 5.2(a) from the relevant

department or agency in order to prevent

abandonment of the application. If evidence of a

good faith effort to obtain a secrecy order pursuant

to § 5.2(a) from the relevant department or agency

is submitted by the applicant within the time period

set by the Ofﬁce, but the application has not been

declassiﬁed or placed under a secrecy order pursuant

to § 5.2(a), the Ofﬁce will again set a time period

within which either the application must be

declassiﬁed, or the application must be placed under

a secrecy order pursuant to § 5.2(a), or the applicant

must submit evidence of a good faith effort to again

obtain a secrecy order pursuant to § 5.2(a) from the

relevant department or agency in order to prevent

abandonment of the application.

(e) An application will not be published under

§ 1.211 of this chapter or allowed under § 1.311 of

this chapter if publication or disclosure of the

application would be detrimental to national

security. An application under national security

review will not be published at least until six months

from its ﬁling date or three months from the date

the application was referred to a defense agency,

whichever is later. A national security classiﬁed

patent application will not be published under §

1.211 of this chapter or allowed under § 1.311 of

this chapter until the application is declassiﬁed and

any secrecy order under § 5.2(a) has been rescinded.

(f) Applications on inventions made outside the

United States and on inventions in which a U.S.

Government defense agency has a property interest

will not be made available to defense agencies.

[43 FR 20470, May 11, 1978; revised, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65

FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para.

(e) revised, 65 FR 57024, Sept. 20, 2000, effective Nov.

29, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003; para. (a) revised, 69 FR 29865,

May 26, 2004, effective June 25, 2004; para. (b) revised,

80 FR 17918, Apr. 2, 2015, effective May 13, 2015]

§ 5.2 Secrecy order.

(a) When notiﬁed by the chief ofﬁcer of a

defense agency that publication or disclosure of the

invention by the granting of a patent would be

detrimental to the national security, an order that

the invention be kept secret will be issued by the

Commissioner for Patents.

(b) Any request for compensation as provided

in 35 U.S.C. 183 must not be made to the Patent and

January 2018R-283

§ 5.2CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Trademark Ofﬁce, but directly to the department or

agency which caused the secrecy order to be issued.

part of the subject matter of an application under a

secrecy order pursuant to paragraph (a) of this

section also falls within the scope of such secrecy

order. Any such application that is pending before

the Ofﬁce must be promptly brought to the attention

of Licensing and Review, unless such application

is itself under a secrecy order pursuant to paragraph

(a) of this section. Any subsequently ﬁled

application containing any signiﬁcant part of the

subject matter of an application under a secrecy

order pursuant to paragraph (a) of this section must

either be hand-carried to Licensing and Review or

mailed to the Ofﬁce in compliance with § 5.1(a).

[24 FR 10381, Dec. 22, 1959; para. (b) revised,

paras. (c) and (d) removed, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; para. (c) added, 65 FR 54604,

Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003;

revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13,

2004]

§ 5.3 Prosecution of application under

secrecy orders; withholding patent.

Unless speciﬁcally ordered otherwise, action on the

application by the Ofﬁce and prosecution by the

applicant will proceed during the time an application

is under secrecy order to the point indicated in this

section:

(a) National applications under secrecy order

which come to a ﬁnal rejection must be appealed or

otherwise prosecuted to avoid abandonment.

Appeals in such cases must be completed by the

applicant but unless otherwise speciﬁcally ordered

by the Commissioner for Patents will not be set for

hearing until the secrecy order is removed.

(b) An interference or derivation will not be

instituted involving a national application under

secrecy order. An applicant whose application is

under secrecy order may suggest an interference (§

41.202(a) of this title), but the Ofﬁce will not act

on the request while the application remains under

a secrecy order.

in condition for allowance except for the secrecy

order the applicant and the agency which caused the

secrecy order to be issued will be notiﬁed. This

notice (which is not a notice of allowance under §

1.311 of this chapter) does not require reply by the

applicant and places the national application in a

condition of suspension until the secrecy order is

removed. When the secrecy order is removed the

Patent and Trademark Ofﬁce will issue a notice of

allowance under § 1.311 of this chapter, or take such

other action as may then be warranted.

(d) International applications and international

design applications under secrecy order will not be

mailed, delivered, or otherwise transmitted to the

international authorities or the applicant.

International applications under secrecy order will

be processed up to the point where, if it were not

for the secrecy order, record and search copies

would be transmitted to the international authorities

or the applicant.

[43 FR 20470, May 11, 1978; amended 43 FR

28479, June 30, 1978; para. (b) amended 53 FR 23736,

June 23, 1988, effective Sept. 12, 1988; para. (c) revised,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

(a) revised, 68 FR 14332, Mar. 25, 2003, effective May

1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (b) revised, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012; para. (d) revised, 80 FR

17918, Apr. 2, 2015, effective May 13, 2015]

§ 5.4 Petition for rescission of secrecy order.

(a) A petition for rescission or removal of a

secrecy order may be ﬁled by, or on behalf of, any

principal affected thereby. Such petition may be in

letter form, and it must be in duplicate.

(b) The petition must recite any and all facts

that purport to render the order ineffectual or futile

if this is the basis of the petition. When prior

publications or patents are alleged the petition must

give complete data as to such publications or patents

and should be accompanied by copies thereof.

between the Government and any of the principals

under which the subject matter of the application or

any signiﬁcant part thereof was developed or to

which the subject matter is otherwise related. If there

is no such contract, the petition must so state.

(d) Appeal to the Secretary of Commerce, as

provided by 35 U.S.C. 181, from a secrecy order

cannot be taken until after a petition for rescission

of the secrecy order has been made and denied.

R-284January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 5.3

Appeal must be taken within sixty days from the

date of the denial, and the party appealing, as well

as the department or agency which caused the order

to be issued, will be notiﬁed of the time and place

of hearing.

[24 FR 10381, Dec. 22, 1959; paras. (a) and (d)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997; revised, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 5.5 Permit to disclose or modiﬁcation of

secrecy order.

(a) Consent to disclosure, or to the ﬁling of an

application abroad, as provided in 35 U.S.C. 182,

shall be made by a “permit” or “modiﬁcation” of

the secrecy order.

(b) Petitions for a permit or modiﬁcation must

fully recite the reason or purpose for the proposed

disclosure. Where any proposed disclose is known

to be cleared by a defense agency to receive

classiﬁed information, adequate explanation of such

clearance should be made in the petition including

the name of the agency or department granting the

clearance and the date and degree thereof. The

petition must be ﬁled in duplicate.

order to permit ﬁling abroad, all countries in which

it is proposed to ﬁle must be made known, as well

as all attorneys, agents and others to whom the

material will be consigned prior to being lodged in

the foreign patent ofﬁce. The petition should include

a statement vouching for the loyalty and integrity

of the proposed disclosees and where their clearance

status in this or the foreign country is known all

details should be given.

(d) Consent to the disclosure of subject matter

from one application under secrecy order may be

deemed to be consent to the disclosure of common

subject matter in other applications under secrecy

order so long as the subject matter is not taken out

of context in a manner disclosing material beyond

the modiﬁcation granted in the ﬁrst application.

(e) Organizations requiring consent for

disclosure of applications under secrecy order to

persons or organizations in connection with repeated

routine operation may petition for such consent in

the form of a general permit. To be successful such

petitions must ordinarily recite the security clearance

status of the disclosees as sufﬁcient for the highest

classiﬁcation of material that may be involved.

[24 FR 10381, Dec. 22, 1959; paras. (b) and (e)

revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1,

1997]

§ 5.6 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

§ 5.7 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

§ 5.8 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

LICENSES FOR FOREIGN EXPORTING

AND FILING

§ 5.11 License for ﬁling in, or exporting to,

a foreign country an application on an

invention made in the United States or

technical data relating thereto.

(a) A license from the Commissioner for Patents

under 35 U.S.C. 184 is required before ﬁling any

application for patent including any modiﬁcations,

amendments, or supplements thereto or divisions

thereof or for the registration of a utility model,

industrial design, or model, in a foreign country,

foreign patent ofﬁce, foreign patent agency, or any

international agency (other than the United States

Patent and Trademark Ofﬁce acting as a Receiving

Ofﬁce for international applications (35 U.S.C. 361,

§ 1.412) or as an ofﬁce of indirect ﬁling for

international design applications (35 U.S.C. 382, §

1.1002)), if the invention was made in the United

States, and:

(1) An application on the invention has been

ﬁled in the United States less than six months prior

to the date on which the application is to be ﬁled;

(2) No application on the invention has been

ﬁled in the United States.

January 2018R-285

§ 5.11CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(b) The license from the Commissioner for

Patents referred to in paragraph (a) of this section

would also authorize the export of technical data

abroad for purposes relating to the preparation, ﬁling

or possible ﬁling and prosecution of a foreign

application without separately complying with the

regulations contained in 22 CFR parts 120 through

130 (International Trafﬁc in Arms Regulations of

the Department of State), 15 CFR parts 730 through

774 (Export Administration Regulations of the

Bureau of Industry and Security, Department of

Commerce), and 10 CFR part 810 (Assistance to

Foreign Atomic Energy Activities Regulations of

the Department of Energy).

application, or in any form, are being exported for

purposes related to the preparation, ﬁling or possible

ﬁling and prosecution of a foreign application,

without the license from the Commissioner for

Patents referred to in paragraphs (a) or (b) of this

section, or on an invention not made in the United

States, the export regulations contained in 22 CFR

parts 120 through 130 (International Trafﬁc in Arms

Regulations of the Department of State), 15 CFR

parts 730 through 774 (Export Administration

Regulations of the Bureau of Industry and Security,

Department of Commerce), and 10 CFR part 810

(Assistance to Foreign Atomic Energy Activities

Regulations of the Department of Energy) must be

complied with unless a license is not required

because a United States application was on ﬁle at

the time of export for at least six months without a

secrecy order under § 5.2 being placed thereon. The

term "exported" means export as it is deﬁned in 22

CFR part 120, 15 CFR part 734, and activities

covered by 10 CFR part 810.

(d) If a secrecy order has been issued under §

5.2, an application cannot be exported to, or ﬁled

in, a foreign country (including an international

agency in a foreign country), except in accordance

with § 5.5.

(e) No license pursuant to paragraph (a) of this

section is required:

(1) If the invention was not made in the

United States, or

(2) If the corresponding United States

application is not subject to a secrecy order under

§ 5.2, and was ﬁled at least six months prior to the

date on which the application is ﬁled in a foreign

country, or

(3) For subsequent modiﬁcations,

amendments and supplements containing additional

subject matter to, or divisions of, a foreign patent

application if:

(i) A license is not, or was not, required

under paragraph (e)(2) of this section for the foreign

application;

(ii) The corresponding United States

application was not required to be made available

for inspection under 35 U.S.C. 181; and

(iii) Such modiﬁcations, amendments,

and supplements do not, or did not, change the

general nature of the invention in a manner which

would require any corresponding United States

application to be or have been available for

inspection under 35 U.S.C. 181.

(f) A license pursuant to paragraph (a) of this

section can be revoked at any time upon written

notiﬁcation by the United States Patent and

Trademark Ofﬁce. An authorization to ﬁle a foreign

application resulting from the passage of six months

from the date of ﬁling of a United States patent

application may be revoked by the imposition of a

secrecy order.

[49 FR 13461, Apr. 4, 1984; paras. (a) and (e), 56

FR 1924, Jan. 18, 1991, effective Feb. 19, 1991; paras.

(b), (c), and (e)(3) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; paras. (a)-(c) revised, 68 FR

14332, Mar. 25, 2003, effective May 1, 2003; paras. (b)

and (c) revised, 70 FR 56119, Sept. 26, 2005, effective

Nov. 25, 2005; paras. (a) through (c), (e)(3)(i) and (f)

revised, 80 FR 17918, Apr. 2, 2015, effective May 13,

2015]

§ 5.12 Petition for license.

(a) Filing of an application on an invention made

in the United States will be considered to include a

petition for license under 35 U.S.C. 184 for the

subject matter of the application. The ﬁling receipt

or other ofﬁcial notice will indicate if a license is

granted. If the initial automatic petition is not

granted, a subsequent petition may be ﬁled under

paragraph (b) of this section.

(b) A petition for license must include the fee

set forth in § 1.17(g) of this chapter, the petitioner’s

address, and full instructions for delivery of the

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MANUAL OF PATENT EXAMINING PROCEDURE§ 5.12

requested license when it is to be delivered to other

than the petitioner. The petition should be presented

in letter form.

[48 FR 2714, Jan. 20, 1983; amended 49 FR 13462,

Apr. 4, 1984; para. (b) revised, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997; para. (b) revised, 65 FR

54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)

revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22,

2004; para. (a) revised, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

§ 5.13 Petition for license; no corresponding

application.

If no corresponding national, international design,

or international application has been ﬁled in the

United States, the petition for license under § 5.12(b)

must also be accompanied by a legible copy of the

material upon which a license is desired. This copy

will be retained as a measure of the license granted.

[43 FR 20471, May 11, 1978; 49 FR 13462, Apr.

4, 1984; revised, 62 FR 53132, Oct. 10, 1997, effective

Dec. 1, 1997; revised, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

§ 5.14 Petition for license; corresponding

U.S. application.

(a) When there is a corresponding United States

application on ﬁle, a petition for license under §

5.12(b) must also identify this application by

application number, ﬁling date, inventor, and title,

but a copy of the material upon which the license is

desired is not required. The subject matter licensed

will be measured by the disclosure of the United

States application.

(b) Two or more United States applications

should not be referred to in the same petition for

license unless they are to be combined in the foreign

or international application, in which event the

petition should so state and the identiﬁcation of each

United States application should be in separate

paragraphs.

abroad contains matter not disclosed in the United

States application or applications, including the case

where the combining of two or more United States

applications introduces subject matter not disclosed

in any of them, a copy of the application as it is to

be ﬁled or exported abroad, must be furnished with

the petition. If, however, all new matter in the

application to be ﬁled or exported is readily

identiﬁable, the new matter may be submitted in

detail and the remainder by reference to the pertinent

United States application or applications.

[43 FR 20471, May 11, 1978; 49 FR 13462, Apr.

4, 1984; para. (a) revised, 62 FR 53132, Oct. 10, 1997,

effective Dec. 1, 1997; para. (c) revised, 80 FR 17918,

Apr. 2, 2015, effective May 13, 2015]

§ 5.15 Scope of license.

(a) Applications or other materials reviewed

pursuant to §§ 5.12 through 5.14, which were not

required to be made available for inspection by

defense agencies under 35 U.S.C. 181, will be

eligible for a license of the scope provided in this

paragraph. This license permits subsequent

modiﬁcations, amendments, and supplements

containing additional subject matter to, or divisions

of, a foreign application, if such changes to the

application do not alter the general nature of the

invention in a manner that would require the United

States application to have been made available for

inspection under 35 U.S.C. 181. Grant of this license

authorizes the export and ﬁling of an application in

a foreign country or to any foreign patent agency or

international patent agency when the subject matter

of the foreign application corresponds to that of the

domestic application. This license includes

authority:

(1) To export and ﬁle all duplicate and

formal application papers in foreign countries or

with international agencies;

(2) To make amendments, modiﬁcations,

and supplements, including divisions, changes or

supporting matter consisting of the illustration,

exempliﬁcation, comparison, or explanation of

subject matter disclosed in the application; and

(3) To take any action in the prosecution of

the foreign application provided that the adding of

subject matter or taking of any action under

paragraph (a)(1) or (2) of this section does not

change the general nature of the invention disclosed

in the application in a manner that would require

such application to have been made available for

inspection under 35 U.S.C. 181 by including

technical data pertaining to:

January 2018R-287

§ 5.15CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(i) Defense services or articles designated

in the United States Munitions List applicable at the

time of foreign ﬁling, the unlicensed exportation of

which is prohibited pursuant to the Arms Export

Control Act, as amended, and 22 CFR parts 120

through 130; or

(ii) Restricted Data, sensitive nuclear

technology or technology useful in the production

or utilization of special nuclear material or atomic

energy, dissemination of which is subject to

restrictions of the Atomic Energy Act of 1954, as

amended, and the Nuclear Non- Proliferation Act

of 1978, as implemented by the regulations for

Assistance to Foreign Atomic Energy Activities, 10

CFR part 810, in effect at the time of foreign ﬁling.

(b) Applications or other materials which were

required to be made available for inspection under

35 U.S.C. 181 will be eligible for a license of the

scope provided in this paragraph. Grant of this

license authorizes the export and ﬁling of an

application in a foreign country or to any foreign

patent agency or international patent agency.

Further, this license includes authority to export and

ﬁle all duplicate and formal papers in foreign

countries or with foreign and international patent

agencies and to make amendments, modiﬁcations,

and supplements to, ﬁle divisions of, and take any

action in the prosecution of the foreign application,

provided subject matter additional to that covered

by the license is not involved.

to § 5.13 or § 5.14 shall have the scope indicated in

paragraph (a) of this section, if it is so speciﬁed in

the license. A petition, accompanied by the required

fee (§ 1.17(g) of this chapter), may also be ﬁled to

change a license having the scope indicated in

paragraph (b) of this section to a license having the

scope indicated in paragraph (a) of this section. No

such petition will be granted if the copy of the

material ﬁled pursuant to § 5.13 or any

corresponding United States application was

required to be made available for inspection under

35 U.S.C. 181. The change in the scope of a license

will be effective as of the date of the grant of the

petition.

(d) In those cases in which no license is required

to ﬁle or export the foreign application, no license

is required to ﬁle papers in connection with the

prosecution of the foreign application not involving

the disclosure of additional subject matter.

(e) Any paper ﬁled abroad or transmitted to an

international patent agency following the ﬁling of

a foreign application that changes the general nature

of the subject matter disclosed at the time of ﬁling

in a manner that would require such application to

have been made available for inspection under 35

U.S.C. 181 or that involves the disclosure of subject

matter listed in paragraph (a)(3)(i) or (ii) of this

section must be separately licensed in the same

manner as a foreign application. Further, if no

license has been granted under § 5.12(a) on ﬁling

the corresponding United States application, any

paper ﬁled abroad or with an international patent

agency that involves the disclosure of additional

subject matter must be licensed in the same manner

as a foreign application.

(f) Licenses separately granted in connection

with two or more United States applications may

be exercised by combining or dividing the

disclosures, as desired, provided:

(1) Subject matter which changes the general

nature of the subject matter disclosed at the time of

ﬁling or which involves subject matter listed in

paragraphs (a)(3) (i) or (ii) of this section is not

introduced and,

(2) In the case where at least one of the

licenses was obtained under § 5.12(b), additional

subject matter is not introduced.

(g) A license does not apply to acts done before

the license was granted. See § 5.25 for petitions for

retroactive licenses.

[49 FR 13462, Apr. 4, 1984; paras. (a) - (c), (e)

and (f), 56 FR 1924, Jan. 18, 1991, effective Feb. 19,

1991; paras. (a)-(c) and (e) revised, 62 FR 53132, Oct.

10, 1997, effective Dec. 1, 1997; para. (c) revised, 69 FR

56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (a)

introductory text and paras. (a)(3), (b), (d), and (e)

revised, 80 FR 17918, Apr. 2, 2015, effective May 13,

2015]

§ 5.16 [Reserved]

[Removed and reserved, 62 FR 53132, Oct. 10,

1997, effective Dec. 1, 1997]

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MANUAL OF PATENT EXAMINING PROCEDURE§ 5.16

§ 5.17 [Reserved]

[49 FR 13463, Apr. 4, 1984; removed and reserved,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997]

§ 5.18 Arms, ammunition, and implements

of war.

(a) The exportation of technical data relating to

arms, ammunition, and implements of war generally

is subject to the International Trafﬁc in Arms

Regulations of the Department of State (22 CFR

parts 120 through 130); the articles designated as

arms, ammunitions, and implements of war are

enumerated in the U.S. Munitions List (22 CFR part

121). However, if a patent applicant complies with

regulations issued by the Commissioner for Patents

under 35 U.S.C. 184, no separate approval from the

Department of State is required unless the applicant

seeks to export technical data exceeding that used

to support a patent application in a foreign country.

This exemption from Department of State

regulations is applicable regardless of whether a

license from the Commissioner for Patents is

required by the provisions of §§ 5.11 and 5.12 (22

CFR part 125).

(b) When a patent application containing subject

matter on the Munitions List (22 CFR part 121) is

subject to a secrecy order under § 5.2 and a petition

is made under § 5.5 for a modiﬁcation of the secrecy

order to permit ﬁling abroad, a separate request to

the Department of State for authority to export

classiﬁed information is not required (22 CFR part

125).

[35 FR 6430., Apr. 22, 1970; revised, 62 FR 53132,

Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised,

68 FR 14332, Mar. 25, 2003, effective May 1, 2003]

§ 5.19 Export of technical data.

(a) Under regulations (15 CFR 734.3(b)(1)(v))

established by the Department of Commerce, a

license is not required in any case to ﬁle a patent

application or part thereof in a foreign country if

the foreign ﬁling is in accordance with the

regulations (§§ 5.11 through 5.25) of the U.S. Patent

and Trademark Ofﬁce.

(b) An export license is not required for data

contained in a patent application prepared wholly

from foreign-origin technical data where such

application is being sent to the foreign inventor to

be executed and returned to the United States for

subsequent ﬁling in the U.S. Patent and Trademark

Ofﬁce (15 CFR 734.10(a)).

[45 FR 72654, Nov. 3, 1980; para. (a) revised, 58

FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; revised,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997;

revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25,

2005]

§ 5.20 Export of technical data relating to

sensitive nuclear technology.

Under regulations (10 CFR 810.7) established by

the United States Department of Energy, an

application ﬁled in accordance with the regulations

(§§ 5.11 through 5.25) of the Patent and Trademark

Ofﬁce and eligible for foreign ﬁling under 35 U.S.C.

184, is considered to be information available to the

public in published form and a generally authorized

activity for the purposes of the Department of

Energy regulations.

[49 FR 13463, Apr. 4, 1984; revised, 62 FR 53132,

Oct. 10, 1997, effective Dec. 1, 1997]

§ 5.25 Petition for retroactive license.

(a) A petition for retroactive license under 35

U.S.C. 184 shall be presented in accordance with §

5.13 or § 5.14(a), and shall include:

(1) A listing of each of the foreign countries

in which the unlicensed patent application material

was ﬁled,

(2) The dates on which the material was ﬁled

in each country,

(3) A veriﬁed statement (oath or declaration)

containing:

(i) An averment that the subject matter

in question was not under a secrecy order at the time

it was ﬁled aboard[ sic], and that it is not currently

under a secrecy order,

(ii) A showing that the license has been

diligently sought after discovery of the proscribed

foreign ﬁling, and

(iii) An explanation of why the material

was ﬁled abroad through error without the required

license under § 5.11 ﬁrst having been obtained, and

January 2018R-289

§ 5.25CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(4) The required fee (§ 1.17(g) of this

chapter).

(b) The explanation in paragraph (a) of this

section must include a showing of facts rather than

a mere allegation of action through error. The

showing of facts as to the nature of the error should

include statements by those persons having personal

knowledge of the acts regarding ﬁling in a foreign

country and should be accompanied by copies of

any necessary supporting documents such as letters

of transmittal or instructions for ﬁling. The acts

which are alleged to constitute error should cover

the period leading up to and including each of the

proscribed foreign ﬁlings.

denied, a time period of not less than thirty days

shall be set, during which the petition may be

renewed. Failure to renew the petition within the

set time period will result in a ﬁnal denial of the

petition. A ﬁnal denial of a petition stands unless a

petition is ﬁled under § 1.181 within two months of

the date of the denial. If the petition for a retroactive

license is denied with respect to the invention of a

pending application and no petition under § 1.181

has been ﬁled, a ﬁnal rejection of the application

under 35 U.S.C. 185 will be made.

[49 FR 13463, Apr. 4, 1984; para. (a), 56 FR 1924,

Jan. 18, 1991, effective Feb. 19, 1991; para. (c) removed,

62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.

(a)(4) revised, para. (b) redesignated as para. (c) and para.

(b) added, 69 FR 56481, Sept. 21, 2004, effective Nov.

22, 2004; paras. (a)(3)(iii) and (b) revised, 77 FR 48776,

Aug. 14, 2012, effective Sept. 16, 2012]

GENERAL

§ 5.31 [Reserved]

[24 FR 10381, Dec. 22, 1959; Redesignated at 49

FR 13463, Apr. 4, 1984; removed and reserved, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997]

§ 5.32 [Reserved]

[24 FR 10381, Dec. 22, 1959; Redesignated at 49

FR 13463, Apr. 4, 1984; removed and reserved, 62 FR

53132, Oct. 10, 1997, effective Dec. 1, 1997]

§ 5.33 [Reserved]

[49 FR 13463, Apr. 4, 1984; amended, 61 FR

56439, Nov. 1, 1996, effective Dec. 2, 1996; removed

and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec.

1, 1997]

R-290January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 5.31

Index I — RULES RELATING TO

PATENTS

Abandoned applications:

Abandonment by failure to reply ............ 1.135

Abandonment after judgment .............. 41.127

Abandonment for failure to pay issue

fee ........................................................ 1.316

Express abandonment ............................ 1.138

Processing fee ...................................... 1.21(n)

Referred to in issued patents .................... 1.14

Revival of .............................................. 1.137

When open to public inspection .............. 1.14

Abandonment of application. (See Abandoned

applications.)

Abstract of the disclosure ...... 1.72(b) 1.77 1.163

Access to pending applications (limited) ........ 1.14

Action by applicant ............................ 1.111 1.114

Addresses for correspondence with the United States

Patent and Trademark Ofﬁce .......................... 1.1

Deposit account replenishment ...... 1.25(c)(3)

Director of the United States Patent and

Trademark Ofﬁce ................................ 1.1(a)

Disciplinary Proceedings ............ 1.1(a)(3)(ii)

FOIA Ofﬁcer .................... 102.1(b) 102.4(a)

Generally ................................................ 1.1(a)

Licensing and Review ............................ 5.1(a)

Ofﬁce of the General Counsel .......... 1.1(a)(3)

Ofﬁce of the Solicitor .................. 1.1(a)(3)(iii)

Mail Stops

Mail Stop 8 .................................... 1.1(a)(3)

Mail Stop 24 ...................................... 4.3(c)

Mail Stop Assignment Recordation

Services ............................ 1.1(a)(4)(i) 3.27

Mail Stop Congressional Relations.... 150.6

Mail Stop Document Services.... 1.1(a)(4)(ii)

Mail Stop Ex parte Reexam .......... 1.1(c)(1)

Mail Stop Hatch-Waxman PTE .......... 1.1(e)

Mail Stop Inter partes Reexam.... 1.1(c)(2)

Mail Stop Interference .................... 41.10(b)

Mail Stop L&R ........................................ 5.1

Mail Stop OED .............................. 1.1(a)(5)

Mail Stop

PCT ........ 1.1(b) 1.417 1.434(a) 1.480(b)

Maintenance fee payments .................... 1.1(d)

Patent correspondence ........................ 1.1(a)(1)

Patent and Trademark Appeal

Board ............ 1.1(a)(1) 41.10 42.6(b)(2)(ii)

Privacy Ofﬁcer ................ 102.23(a) 102.24(a)

Trademark correspondence ................ 2.190(a)

Adjustment of patent term. (see Patent term

adjustment due to examination delay.)

Administrator may make application and receive

patent (see Legal Representative)

Admission to practice. (See Attorneys and agents.)

Afﬁdavit (See also Oath in patent application):

After appeal ............................................ 41.33

As evidence in a contested case .......... 41.154

Attribution or prior public disclosure under the

AIA ...................................................... 1.130

To disqualify commonly owned patent or

published application as prior art .... 1.131(c)

Traversing rejections or objections ........ 1.132

Agents. (See Attorneys and agents.)

Allowance and issue of patent:

Amendment after allowance .................. 1.312

Application abandoned for nonpayment of issue

fee ........................................................ 1.316

Deferral of issuance ................................ 1.314

Delayed payment of issue fee ................ 1.137

Delivery of patent .................................. 1.315

Failure to pay issue fee .......... 1.137(c), 1.316

Issuance of patent .................................. 1.314

Notice of allowance ................................ 1.311

Patent to issue upon payment of issue

fee .............................................. 1.311 1.314

Patent to lapse if issue fee is not paid in

full ........................................................ 1.317

Reasons for ........................................ 1.104(e)

Withdrawal from issue ............................ 1.313

Amendment:

Adding or substituting claims ................ 1.121

After appeal ................................ 41.33 41.63

After decision on appeal, based on new rejection

by the Board ............ 41.50(b)(1) 41.77(b)(1)

After ﬁnal action .................................... 1.116

After ﬁnal action (transitional

procedures) .......................................... 1.129

After notice of allowance ...................... 1.312

Copying claim of another application for

interference ........................................ 41.202

Copying claim of issued patent ............ 41.202

Deletions and insertions ........................ 1.121

Drawings ................................................ 1.121

During inter partes

review ................................ 42.107(d) 42.221

Manner of making .................................. 1.121

Not covered by original oath .................... 1.67

Numbering of claims .............................. 1.126

Of amendments ...................................... 1.121

January 2018R-291

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Of claims ................................................ 1.121

Of disclosure .......................................... 1.121

Of drawing .............................................. 1.121

Of speciﬁcation ...................................... 1.121

Paper and writing ...................................... 1.52

Petition from refusal to admit ................ 1.127

Preliminary ............................................ 1.115

Proposed during interference.... 41.121 41.208

Provisional application ........................ 1.53(c)

Reexamination

proceedings ................ 1.121(j) 1.530 1.941

Reissue .................................... 1.121(i) 1.173

Requisites of.. 1.33 1.111 1.116 1.121 1.125

Right to amend ................ 1.111 1.116 1.127

Signature to .............................................. 1.33

Substitute speciﬁcation .......................... 1.125

Time for .................................................. 1.134

To applications in interference ............ 41.121

To correct inaccuracies .......................... 1.121

To correspond to original drawing or

speciﬁcation .......................................... 1.121

To reissues. ............................................ 1.173

To save from abandonment .................... 1.135

Within appeal brief.... 41.37(c)(2) 41.41(b)(1)

Amino acid sequences. (See Nucleotide and/or amino

acid sequences.)

Appeals:

Civil Actions under 35 U.S.C. 145 or

146 .......................................................... 90.3

To Court of Appeals for the Federal Circuit:

Fee provided by rules of court .............. 90.2

From the Patent Trial and Appeal

Board .......................................... 90.1 90.3

Notice and service .................................. 90.2

Time for ﬁling notice of appeal ............ 90.3

To the Patent Trial and Appeal Board

Afﬁdavits after appeal .............. 41.33 41.63

Briefs ........ 41.37 41.41 41.67 41.68 41.71

Decision/Action by Board ........ 41.50 41.77

Return of jurisdiction to

examiner ................ 1.979 41.54 41.81

Termination of

proceedings .................. 1.197(b) 42.72

Ex parte appeals .............. 41.30 - 41.54

Examiner’s answer .................... 41.39 41.69

Fees .......................................... 41.20 41.45

Hearing of ...................... 41.47 41.73 42.70

Inter partes reexamination.... 41.61 - 41.81

New grounds of

rejection.... 41.39(a)(2) 41.50(b) 41.69(b)

.................................... 41.71(c)(3) 41.77(b)

Notice of appeal ........................ 41.31 41.61

Public inspection or publication of

decisions .................................... 41.6 42.14

Rehearing. 41.50(b)(2) 41.52 41.79 41.77(b)(2)

Reopening after ﬁnal Board decision... 1.198

Sanctions ................................ 41.128 42.12

What may be appealed .............. 41.31 41.61

Who may appeal ...................... 41.31 41.61

Applicant for patent:

Assignee or obligated assignee ................ 1.46

Correspondence address .......................... 1.33

Daytime telephone number .................... 1.33

Deceased or legally incapacitated

inventor ........................................ 1.43 1.422

In a continued prosecution application

........................................ 1.53(b) 1.53(d)(4)

In an international application .... 1.421 1.424

Informed of application number ........ 1.54(b)

Inventorship in a provisional application

.......................................................... 41.41(c)

Legal Representative ................................ 1.43

Mailing address and residence of inventors may

be provided in oath/declaration or in application

data sheet ...................................... 1.63 1.76

Must be represented by a patent practitioner if

juristic entity .......................................... 1.31

Person making oath or declaration

.............................................. 1.64 (pre-AIA)

Personal attendance unnecessary .............. 1.2

Required to conduct business with decorum and

courtesy .................................................... 1.3

Required to report assistance received ...... 1.4

Who may apply for a patent .......... 1.41 1.48

Application Data sheet .................................... 1.76

Application for patent (See also Abandoned

applications, Claims, Drawing, Examination of

applications, Provisional applications, Publication

of application, Published application, Reissues,

Speciﬁcation):

Access to .................................................. 1.14

Acknowledgment of ﬁling .................. 1.54(b)

Alteration .......................... 1.52(c) 1.53(d)(5)

Application number and ﬁling date .......... 1.54

Arrangement ............................................ 1.77

Compact disc submissions (see Electronic

documents)

Conﬁdentiality of applications ................ 1.14

Continuation or division, reexecution not

required .................................................. 1.63

Continued prosecution application ...... 1.53(d)

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MANUAL OF PATENT EXAMINING PROCEDURE

Filed by facsimile ............................ 1.6 1.8

Copies of, furnished to applicants ............ 1.59

Cross-references to related applications.... 1.78

Deceased or legally incapacitated

inventor .................................................. 1.43

Declaration .............................................. 1.68

Duty of disclosure .................................... 1.56

Examined only when

complete ...................... 1.53 (pre-AIA) 1.53

Filed by other than inventor.... 1.42 1.43 1.46

Filing date .......................... 1.53(pre-plt(AIA))

Filing requirements .......... 1.53(pre-plt(AIA))

Foreign language oath or declaration ...... 1.69

Formulas and tables .................................. 1.58

General requisites .................................... 1.51

Identiﬁcation required in letters

concerning ................................................ 1.5

Incomplete application not forwarded for

examination .................... 1.53(pre-plt(AIA))

Interlineations, etc., to be indicated .......... 1.52

Involving national security ........................ 5.1

Language, paper, writing, margin ............ 1.52

Later ﬁling of oath and ﬁling

fee .......................................... 1.53 (pre-AIA)

Missing pages when application ﬁled... 1.53(e)

Naming of inventors:

Application data sheet ................ 1.76(b)(1)

In a continued prosecution application

.................................................... 1.53(d)(4)

In a provisional application

.................................. 1.41(c) 1.51(c)(1)(ii)

In an international application ............ 1.421

National stage .............................. 1.497

Inconsistencies between application data sheet

and oath or declaration .................. 1.76(d)

Joint inventors ...................................... 1.45

Oath/declaration. .............................. 1.63(a)

Non-English language .............................. 1.52

Nonpublication request ........................ 1.213

Numbering of claims ............................ 1.126

Numbering of paragraphs ............ 1.52 1.125

Original disclosure not expunged .... 1.59(a)(2)

Parts ﬁled separately ................................ 1.54

Parts of application desirably ﬁled

together .................................................. 1.54

Parts of complete application .................. 1.51

Processing fees ........................................ 1.17

Provisional application ............ 1.9 1.51 1.53

Publication of ............................ 1.211 1.219

Published ........................................ 1.9 1.215

Relating to atomic energy ........................ 1.14

Reservation for future application not

permitted ................................................ 1.79

Secrecy order ...................................... 5.1 5.5

Status information .................................... 1.14

Tables and formulas .................................. 1.58

Third party submission in ...................... 1.290

To contain but one invention unless

connected .............................................. 1.141

To whom made ........................................ 1.51

Two or more by same party with conﬂicting

claims ...................................................... 1.78

Application number .................... 1.5(a) 1.53 1.54

Arbitration award ﬁling ................................ 1.335

Arbitration in a contested case before the

Board ............................................ 41.126 42.410

Assignee:

Correspondence held with assignee(s) of entire

interest .......................................... 3.71 3.73

Establishing ownership ........................ 3.73(b)

May conduct prosecution of

application .................................... 3.71 3.73

May make application for patent .............. 1.46

May take action in Board proceeding ...... 41.9

Must consent to application for reissue of

patent ........................................ 1.171 1.172

Partial assignee(s) .......... 1.46 3.71 3.73 3.81

Assignments and recording:

Abstracts of title, fee for ................ 1.19(b)(5)

Conditional assignments .......................... 3.56

Cover sheet required ........................ 3.28 3.31

Corrections ............................................ 3.34

Date of receipt is date of record .............. 3.51

Effect of recording .................................... 3.54

Fees ...................................................... 1.21(h)

Formal requirements ........................ 3.21 3.28

If recorded before payment of issue fee, patent

may issue to assignee .............................. 3.81

Impact on entitlement to micro entity

status ...................................................... 1.29

Impact on small entity status .................... 1.27

Joint research agreements ...... 3.11(c) 3.31(g)

Mailing address for submitting

documents .............................................. 3.27

May serve as inventor’s oath or

declaration .......................................... 1.63(e)

Must be recorded in Patent and Trademark Ofﬁce

to issue patent to assignee ...................... 3.81

Must identify patent or application .......... 3.21

Orders for copies of .................................. 1.12

Patent may issue to assignee .................... 3.81

Recording of assignments ........................ 3.11

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Records open to public inspection .......... 1.12

Requirements for recording ............ 3.21 3.41

What will be accepted for recording ........ 3.11

Atomic energy applications reported to Department

of Energy ...................................................... 1.14

Attorneys and agents:

Acting in representative capacity.... 1.33 1.34

Assignment will not operate as a revocation of

power ...................................................... 1.36

Certiﬁcate of good standing ................ 1.21(a)

Complaints ................................................ 4.6

Ofﬁce cannot aid in selection of .............. 1.31

Personal interviews with examiners ...... 1.133

Power of attorney .................................... 1.32

Power to inspect ...................................... 1.14

Representative capacity .................. 1.33 1.34

Registration fees .................................. 1.21(a)

Required to conduct business with decorum and

courtesy .................................................... 1.3

Revocation of power ............................ 1.36(a)

Signature and certiﬁcate of

attorney .......................................... 1.4 11.18

Withdrawal of ........................ 1.36(b) 41.5(c)

Authorization of agents. (See Attorneys and agents.)

Award in arbitration ...................................... 1.335

Balance in deposit account ............................ 1.25

Basic ﬁling fee ................................................ 1.16

Beneﬁt of earlier application .......................... 1.78

Biological material. (See Deposit of biological

material.)

Briefs:

In petitions to Director ...................... 1.181(b)

On appeal to

Board ........ 41.37 41.41 41.67 41.68 41.71

Business to be conducted with decorum and

courtesy .......................................................... 1.3

Business to be transacted in writing ................ 1.2

Certiﬁcate of correction .................... 1.322 1.323

Fees ...................................................... 1.20(a)

Mistakes not corrected ............................ 1.325

Certiﬁcate of mailing (First Class) or

transmission .................................................... 1.8

Certiﬁcation effect of presentation to

Ofﬁce .............................................. 1.4(d) 11.18

Certiﬁed copies of records, papers,

etc. ...................................................... 1.4(f) 1.13

Fee for certiﬁcation ........................ 1.19(b)(4)

Chemical and mathematical formulae and

tables ............................................................ 1.58

Citation of prior art in patented ﬁle .............. 1.501

Citation of references .............................. 1.104(d)

Civil action (time for commencing under 35 U.S.C.

145 or 146) .......................................... 90.3(a)(3)

Claims (See also Examination of applications):

Amendment of .................................. 1.121(c)

Commence on separate sheet or electronic page

........................................ 1.52(b)(3) 1.75(h)

Conﬂicting, same applicant or

owner ............................................ 1.78(e), (f)

Dependent ................................................ 1.75

Design patent .......................................... 1.153

Effective ﬁling date of (under AIA) ...... 1.109

May be in dependent form .................. 1.75(c)

More than one permitted ...................... 1.75(b)

Multiple dependent .............................. 1.75(c)

Must conform to invention and

speciﬁcation ...................................... 1.75(d)

Notice of rejection of .............................. 1.104

Numbering of ........................................ 1.126

Part of complete application .......... 1.51(b)(1)

Plant patent. ............................................ 1.164

Rejection of ............................................ 1.104

Required .............................................. 1.75(a)

Separate from other parts of

application .......................................... 1.75(h)

Twice rejected before appeal ........ 41.31(a)(1)

Color drawing ........................ 1.6(d)(4) 1.84(a)(2)

Commissioner of Patents and Trademarks (See

Director of the USPTO.)

Common ownership, statement by assignee may be

required .................................................. 1.104(c)

Compact disc submissions. (See Electronic

documents.)

Complaints against examiners, how presented.. 1.3

Complaints regarding invention promoters (See

Invention promoters.)

Composition of matter, specimens of ingredients may

be required .................................................... 1.93

Computer program listing appendix .............. 1.96

Concurrent ofﬁce

proceedings.1.178(b) 1.565(a) 1.610(b)(3) 1.620(d) 1.985 1.995

Conﬂicting claims, same applicant or owner in two

or more applications .......................... 1.78(e) (f)

Contested cases before the Patent Trial and Appeal

Board ............................................ 41.100 41.158

Continued examination, request for .............. 1.114

Fee ........................................................ 1.17(e)

Suspension of action after .................... 1.103

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Continued prosecution application ............ 1.53(d)

Suspension of action in .................... 1.103(c)

Continuing application for invention disclosed and

claimed in prior application ............ 1.53 1.63(d)

Control number, display of .......................... 1.419

Copies of patents, published applications, records,

etc. .............................................. 1.11 1.12 1.13

Copies of records, fees .................. 1.19(b) 1.59(c)

Correction, certiﬁcate of .................... 1.322 1.323

Correction of inventorship:

In a nonprovisional application ................ 1.48

Before ﬁling oath/declaration or application

data sheet ................................ 1.41 1.76(c)

By ﬁling an application data

sheet ............................................ 1.76(d)(3)

When ﬁling a continuation or divisional

application ...................................... 1.63(d)

When ﬁling a continued prosecution application

.................................................... 1.53(d)(4)

In a provisional application ................ 1.48(d)

By ﬁling a cover sheet ...................... 1.41(c)

Without ﬁling a cover sheet ............ 1.41(c)

In a reexamination proceeding .......... 1.530(l)

In an international application .............. 1.472

When entering the national stage ........ 1.497

In an issued patent ................................ 1.324

In other than a reissue application .......... 1.48

Inconsistencies between application data sheet

and oath or declaration ...................... 1.76(d)

Motion to correct inventorship in an interference

.................................................. 41.121(a)(2)

Supplemental application data sheet(s)

............................................................ 1.76(c)

Correspondence:

Address:

Change of correspondence address ...... 1.33

Established by the ofﬁce if more than one is

speciﬁed .......................................... 1.33(a)

Of the U.S. Patent and Trademark

Ofﬁce .................................................... 1.1

Business with the Ofﬁce to be transacted

by .............................................................. 1.2

Discourteous communications not

entered ...................................................... 1.3

Double, with different parties in interest not

allowed .............................................. 1.33(a)

Duplicate copies disposed of ................ 1.4(b)

Facsimile transmission .......................... 1.6(d)

Held with attorney or agent ...................... 1.33

Identiﬁcation of application or patent in letter

relating to .................................................. 1.5

Involving national security ........................ 5.1

May be held exclusively with assignee(s) of

entire interest ........................................ 3.71

Nature of .................................................... 1.4

Patent owners in reexamination .......... 1.33(c)

Receipt of letters and papers ...................... 1.6

Rules for conducting in general ........ 1.1 1.10

Separate letter for each subject or inquiry... 1.4

Signature requirements .......................... 1.4(d)

When no attorney or agent ...................... 1.33

With attorney or agent after power or

authorization is ﬁled .............................. 1.33

Court of Appeals for the Federal Circuit, appeal to.

(See Appeal to Court of Appeals for the Federal

Circuit.)

Covered business method patent review (See

Transitional program for covered business method

patent review)

Credit card payment .................................. 1.23(b)

Cross-reference to related applications .. 1.76 1.78

Customer Number:

Deﬁned ............................................ 1.32(a)(5)

Required to establish a Fee Address... 1.363(c)

Date of invention of subject matter of individual

claims .......................................................... 1.110

Day for taking any action or paying any fee falling

on Saturday, Sunday, or Federal holiday ........ 1.7

Death or incapacity of inventor ...................... 1.43

In an international application ................ 1.422

Decision by the Patent Trial and Appeal

Board ................................................ 41.50 41.77

Return of jurisdiction to

examiner ........................ 1.979 41.54 41.81

Termination of proceedings .............. 1.197(b)

Declaration (See also Oath in patent application):

Assignment may serve as .................... 1.63(e)

Foreign language ...................................... 1.69

In lieu of oath .......................................... 1.68

In patent application ................................ 1.68

Substitute statement .................................. 1.64

Deferral of examination .............................. 1.103

Deﬁnitions:

Applicable to part 42 (Trial Practice Before the

Board) .................................................... 42.2

Applicant .................................................. 1.42

Assignment ................................................ 3.1

Claimed invention .................................. 1.9(f)

January 2018R-295

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Covered business method patent .......... 42.301

Customer Number .......................... 1.32(a)(5)

Director .................................................. 1.9(j)

Document .................................................. 3.1

Effective ﬁling date of a claimed

invention .............................................. 1.109

Federal holiday within the District of

Columbia .............................................. 1.9(h)

International application ........................ 1.9(b)

Inventor or inventorship .................... 1.9(d)(1)

Joint inventor or coinventor .............. 1.9(d)(2)

Joint research agreement ........................ 1.9(e)

Micro entity .............................................. 1.29

National application .............................. 1.9(a)

National security classiﬁed .................... 1.9(j)

Nonproﬁt organization .................. 1.27(a)(3)

Nonprovisonal application ................ 1.9(a)(3)

Paper ...................................................... 1.9(k)

Patent practitioner or patent practitioner of

record ...................................................... 1.32

Person (for small entity purposes) ... 1.27(a)(1)

Power of Attorney .......................... 1.32(a)(2)

Principal .......................................... 1.32(a)(3)

Provisional application ...................... 1.9(a)(2)

Published application ............................ 1.9(c)

Recorded document .................................... 3.1

Revocation ...................................... 1.32(a)(4)

Small business concern .................. 1.27(a)(2)

Small entity .......................................... 1.27(a)

Technological invention ...................... 42.301

Terms under Patent Cooperation

Treaty .................................................... 1.401

Delivery of patent .......................................... 1.315

Deposit accounts ............................................ 1.25

Fees ...................................................... 1.21(b)

Deposit of biological material:

Acceptable depository ............................ 1.803

Biological material ................................ 1.801

Examination procedures ........................ 1.809

Furnishing of samples ............................ 1.808

Need or opportunity to make a deposit... 1.802

Replacement or supplemental deposit.... 1.805

Term of deposit ...................................... 1.806

Time of making original deposit ............ 1.804

Viability of deposit ................................ 1.807

Deposit of computer program

listings .......................................... 1.52(e)(i) 1.96

Depositions (See also Testimony in contested cases

before the Board):

Certiﬁcate of ofﬁcer to

accompany ................................ 41.157(e)(6)

Original ﬁled as exhibit .............. 41.157(e)(7)

Person before whom taken .............. 41.157(e)

Transcripts of ...................... 41.154(a) 41.157

Derivation Proceeding:

Arbitration ............................................ 42.410

Common interests in the invention ...... 42.411

Content of the petition .......................... 42.405

Deﬁnitions ............................................ 42.401

Fee ........................................................ 42.404

Filing date ............................................ 42.407

Institution of derivation proceeding.... 42.408

Pendency .............................................. 42.400

Procedure .............................................. 42.400

Public availability of Board records.... 42.412

Service of petition ................................ 42.406

Settlement agreements .......................... 42.409

Time for ﬁling ...................................... 42.403

Who may petition ................................ 42.402

Description of invention. (See Speciﬁcation.)

Design Patent Applications:

Arrangement of application elements.... 1.154

Claim .................................................. 1.153(a)

Drawing .................................................. 1.152

Expedited examination .......................... 1.155

Filing fee .............................................. 1.16(b)

Issue fee .............................................. 1.18(b)

Oath or Declaration ............................ 1.153(b)

Rules applicable .................................... 1.151

Title, description and claim .................... 1.153

Determination of request for ex parte

reexamination .............................................. 1.515

Director of the USPTO (See also Petition to the

Director):

Address of .............................................. 1.1(a)

Availability of decisions by ................ 1.14(e)

Initiates ex parte reexamination ............ 1.520

Disclaimer, statutory:

Fee ...................................................... 1.20(d)

Requirements of .................................... 1.321

Terminal .................................................. 1.321

Disclosure, amendments to add new matter not

permitted ................................................ 1.121(f)

Discovery in cases before the

Board .............................. 41.150 41.158 42.224

Division. (See Restriction of application.)

Document supply fees .................................... 1.19

Drawing:

Amendment of ........................................ 1.121

Arrangement of views .......................... 1.84(i)

Arrows .................................................. 1.84(r)

Character of lines .................................. 1.84(l)

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Color ................ 1.6(d)(4) 1.84(a)(2) 1.165(b)

Content of drawing .................................. 1.83

Correction .................. 1.84(w) 1.85(c) 1.121

Cost of copies of ...................................... 1.19

Design application .................................. 1.152

Figure for front page .......... 1.76(b)(3) 1.84(j)

Filed with application .............................. 1.81

Graphics .............................................. 1.84(d)

Hatching and shading ........................ 1.84(m)

Holes .................................................... 1.84(x)

Identiﬁcation ........................................ 1.84(c)

If of an improvement, must show connection with

old structure ...................................... 1.83(b)

Informal drawings .................................... 1.85

Ink .................................................... 1.84(a)(1)

Lead lines ............................................ 1.84(q)

Legends ................................................ 1.84(o)

Letters .................................................. 1.84(p)

Location of names ................................ 1.84(c)

Mask work notice ................................ 1.84(s)

Must be described in and referred to

speciﬁcation ............................................ 1.74

Must show every feature of the

invention ................................................ 1.83

No return or release ............................ 1.85(b)

Numbering of sheets ............................ 1.84(t)

Numbering of views ............................ 1.84(u)

Numbers .............................................. 1.84(p)

Original should be retained by

applicant ............................................ 1.81(a)

Paper .................................................... 1.84(e)

Part of application papers ................ 1.51(b)(3)

Photographs ........................................ 1.84(b)

Plant patent application .......................... 1.165

Reference characters .................. 1.74 1.84(p)

Reissue .................................................. 1.173

Release not permitted .......................... 1.85(b)

Required by law when necessary for

understanding ........................................ 1.81

Scale .................................................... 1.84(k)

Security markings ................................ 1.84(v)

Shading .............................................. 1.84(m)

Size of sheet and margins .............. 1.84(f) (g)

Standards for drawings ............................ 1.84

Symbols .............................................. 1.84(n)

Views .................................................. 1.84(h)

When necessary, part of complete

application .................................... 1.51(b)(3)

Duty of disclosure ................................ 1.56 1.555

Patent term extension ............................ 1.765

Effective ﬁling date of a claimed invention... 1.109

Election of species ........................................ 1.146

Electronic documents:

Compact disc submissions:

Amino acid sequences ... 1.821 1.823 1.825

Computer program listings .................. 1.96

Incorporation by reference in speciﬁcation

........................................................ 1.52(e)

Nuclide acid sequences

...................................... 1.821 1.823 1.825

Requirements .................................... 1.52(e)

Submitted as part of permanent record

...... 1.52(e) 1.58 1.96 1.821 1.823 1.825

Tables .................................................... 1.58

Employee testimony. (See Testimony by Ofﬁce

employees.)

Establishing micro entity status ...................... 1.29

Establishing small entity status .............. 1.27 1.28

Evidence in contested cases before the

Board ........................................................ 41.154

Ex parte appeals:

Action following decision ...................... 41.54

Amendments during .............................. 41.33

Appeal brief ............................................ 41.37

Decisions and other actions by the

Board .................................................... 41.50

Deﬁnitions .............................................. 41.30

Evidence ................................................ 41.33

Examiner’s answer ................................ 41.39

Extending time periods ...................... 41.31(d)

Fee ...................................... 41.20(b)(4) 41.45

Jurisdiction ............................................ 41.35

Oral hearing ............................................ 41.47

Rehearing .............................................. 41.52

Reply brief .............................................. 41.41

Tolling of time period to ﬁle a reply

brief ...................................................... 41.40

Who may appeal ................................ 41.31(a)

Ex parte reexamination. (See Reexamination.)

Examination of applications:

Advancement of examination ................ 1.102

As to form .............................................. 1.104

Citation of references ........................ 1.104(d)

Completeness of examiner’s action.... 1.104(b)

Deferral of .............................................. 1.103

Examiner’s action .............................. 1.104(a)

International-type search .................... 1.104(a)

Nature of examination ............................ 1.104

Reasons for allowance ...................... 1.104(e)

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Reconsideration after rejection if

requested .............................................. 1.111

Reissue .................................................. 1.176

Rejection of claims ............................ 1.104(c)

Request for continued examination ........ 1.114

Requirements for information by examiner

.............................................................. 1.105

Suspension of ........................................ 1.103

Examiners:

Answers on appeal ...................... 41.39 41.69

Complaints against .................................... 1.3

Interviews with ...................................... 1.133

Executor (See Legal Representative) .............. 1.42

Exhibits (See Models and exhibits)

Export of technical data ........................ 5.19 5.20

Express abandonment .................................. 1.138

Date of receipt of ........................................ 1.6

Petition in regard to .................................. 1.10

Expungement .................................................. 1.59

Extension of patent term (See also Patent term

adjustment):

Due to examination delay under the URAA (35

U.S.C. 154) .......................................... 1.701

Due to regulatory review period (35 U.S.C. 156):

Applicant for ........................................ 1.730

Application for .................................... 1.740

Calculation of term:

Animal drug product ...................... 1.778

Food or color additive .................... 1.776

Human drug product ...................... 1.775

Medical device .............................. 1.777

Veterinary biological product ........ 1.779

Certiﬁcate of extension ........................ 1.780

Conditions for ...................................... 1.720

Correction of informalities ................ 1.740

Determination of eligibility ................ 1.750

Duty of disclosure ................................ 1.765

Filing date of application .................... 1.741

Formal requirements .......................... 1.740

Incomplete application ........................ 1.741

Interim extension under 35 U.S.C.

156(d)(5) ............................................ 1.790

Interim extension under 35 U.S.C.

156(e)(2) ............................................ 1.760

Multiple applications .......................... 1.785

Order granting interim extension ........ 1.780

Patents subject to ................................ 1.710

Priority Mail Express ...................... 1.6 1.10

Signature requirements for application

............................................................ 1.730

Termination of interim extension granted under

35 U.S.C. 156(d)(5) .......................... 1.791

Withdrawal of application .................... 1.770

Extension of time .......................................... 1.136

Fees .......................................................... 1.17

Interference proceedings .......................... 41.4

Facsimile transmission .......................... 1.6(d) 1.8

Federal holiday within the District of

Columbia .................................................... 1.9(h)

Federal Register, publication of rules in ...... 1.351

Fees and payment of money:

Credit card ................................................ 1.23

Deposit accounts ...................................... 1.25

Document supply fees ............................ 1.19

Extension of time .................................... 1.17

Fee on appeal to the Court of Appeals for the

Federal Circuit provided by rules of

court ...................................................... 1.301

Fees payable in advance .......................... 1.22

Foreign ﬁling license petition .............. 1.17(g)

For international-type search report.... 1.21(e)

Itemization required ................................ 1.22

Method of payment .................................. 1.23

Money by mail at risk of sender .............. 1.23

Money paid by mistake ............................ 1.26

Necessary for application to be

complete ................................................ 1.51

Petition fees ...................... 1.17 1.181 41.20

Post allowance ........................................ 1.18

Prioritized examination under 37 CFR

1.102(e) .................................................. 1.17

Processing fees ........................................ 1.17

Reexamination request ........................ 1.20(c)

Refunds .................................................... 1.26

Relating to international applications

.............. 1.25(b) 1.445 1.481 1.482 1.492

Schedule of fees and charges .......... 1.16 1.21

Files open to the public .................................. 1.11

Filing date of application ................................ 1.53

Filing, search, and examination fees .............. 1.16

Filing in Post Ofﬁce ........................................ 1.10

Filing of interference settlement

agreements ................................................ 41.205

Final rejection:

Appeal from ............................................ 41.31

Response to ................................ 1.113 1.116

When and how given .............................. 1.113

First Class Mail (includes Priority Mail

Express) .......................................................... 1.8

R-298January 2018

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Foreign application ........................................ 1.55

License to ﬁle .................................. 5.11 5.25

Foreign country:

Taking oath in .......................................... 1.66

Taking testimony in ........................ 41.156(b)

Foreign mask work protection .................. Part 150

Evaluation of request .............................. 150.4

Deﬁnition .............................................. 150.1

Duration of proclamation ...................... 150.5

Initiation of evaluation .......................... 150.2

Mailing address ...................................... 150.6

Submission of requests .......................... 150.3

Formulas and tables in patent applications..... 1.58

Fraud practiced or attempted on Ofﬁce .......... 1.56

Freedom of Information Act (FOIA)

........................................................ 102.1 102.11

Appeals from initial determinations or untimely

delays ................................................ 102.10

Business information ............................ 102.9

Correspondence address .... 102.1(b) 102.4(a)

Expedited processing ............................ 102.6

Fees ...................................................... 102.11

Public reference facilities ...................... 102.2

Records .................................................. 102.3

Responses to requests ............................ 102.7

Responsibility for responding ............ 102.5

Time limits .......................................... 102.6

Requirements for making requests ........ 102.4

Gazette. (See Ofﬁcial Gazette.)

General authorization to charge deposit

account ...................................... 1.25 1.136(a)(3)

General information and correspondence... 1.1 1.8

Government acquisition of foreign patent

rights ........................................................ Part 501

Government employee invention .............. Part 501

Government interest in patent, recording

of ........................................ 3.11 3.31 3.41 3.58

Governmental registers .................................. 3.58

Guardian of insane person may apply for

patent ............................................................ 1.43

Hague Agreement

Hearings:

Before the Board of Patents Appeals and

Interferences ........................................ 41.47

Fee for appeal hearing ............................ 41.20

Holiday, time for action expiring on .......... 1.6 1.7

Identiﬁcation of application, patent or

registration ...................................................... 1.5

Inconsistencies between application data sheet and

oath or declaration .................................. 1.76(d)

Incorporation by reference ............ 1.57 (pre-AIA)

Information disclosure statement:

At time of ﬁling application .................... 1.51

Content of ................................................ 1.98

Not permitted in provisional

applications ............................................ 1.51

Reexamination ............................ 1.555 1.902

Suspension of action to provide time for

consideration of an IDS in a CPA .... 1.103(b)

Third party submission of .......... 1.290 1.291

To comply with duty of disclosure .......... 1.97

Information, Public .......................... 102.1 102.11

Inter partes appeals:

Action following decision ...................... 41.81

Amendments during .............................. 41.63

Appellant’s brief .................................... 41.67

Decisions and other actions by the

Board .................................................... 41.77

Deﬁnitions .............................................. 41.60

Evidence ................................................ 41.63

Examiner’s answer ................................ 41.69

Extending time periods ...................... 41.61(e)

Fee .......................................... 41.20(b) 41.61

Jurisdiction ............................................ 41.64

Notice of appeal and cross appeal to

Board .................................................... 41.61

Oral hearing ............................................ 41.73

Rehearing .............................................. 41.79

Rebuttal brief .......................................... 41.71

Respondent’s brief .................................. 41.68

Time for ﬁlling briefs ............................ 41.66

Who may appeal ................................ 41.61(a)

Inter partes reexamination. (See Reexamination.)

Inter partes review:

Amendment of the patent .................... 42.121

Content of the petition .......................... 42.104

Fee ........................................................ 42.103

Filing date ............................................ 42.106

Filing of supplemental information ...... 42.123

Institution of inter partes review .......... 42.108

Multiple proceedings and joinder ........ 42.122

Pendency .............................................. 42.100

Preliminary response to petition .......... 42.107

Procedure .............................................. 42.100

Response by patent owner .................... 42.120

January 2018R-299

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Service of petition ................................ 42.105

Time for ﬁling ...................................... 42.102

Who may petition ................................ 42.101

Interferences:

Abandonment of the contest ............ 41.127(b)

Access to applications .......................... 1.11(e)

Addition of patent or application.... 41.203(d)

Amendment during ...................... 41.121(a)(2)

Applicant requests ................................ 41.202

Arbitration ............................................ 41.126

Burden of proof .................................... 41.207

Common interests in the invention ...... 41.206

Concession of priority ................ 41.127(b)(3)

Copying claims from

patent ............................ 41.121(a)(2), 41.202

Declaration of interference .................. 41.203

Deﬁnitions ............................................ 41.201

Disclaimer to avoid interference.. 41.127(b)(2)

Discovery .............................................. 41.150

Extension of time .................................... 41.4

In what cases declared .......................... 41.203

Junior party fails to overcome ﬁling date of

senior party ................................ 41.204(a)(3)

Jurisdiction over involved ﬁles ............ 41.103

Manner of service of papers ................ 41.106

Motions ................................................ 41.121

Notice to ﬁle civil action .......................... 90.2

Notice of declaration ........................ 41.203(b)

Petitions .................................................... 41.3

Presumption as to order of

invention .................................... 41.207(a)(1)

Priority Statement ............................ 41.204(a)

Prosecution by owner of entire

interest ................................................ 41.9(a)

Records of, when open to public .......... 1.11(e)

Requests by applicants .................... 41.202(a)

Same party ............................................ 41.206

Sanctions ............................................ 41.128

Secrecy order cases ................................ 5.3(b)

Service of papers .............................. 41.106(e)

Statutory disclaimer by patentee

during ............................................ 41.127(b)

Suggestion of claims for interference.... 41.202

Suspension of other proceedings .......... 41.103

Time period for completion ............ 41.200(c)

Translation of document in foreign

language ........................................ 41.154(b)

International application. (See Patent Cooperation

Treaty.)

International Design

Application ........ 37 CFR 1.1001 37 CFR 1.1071

Content Requirements ............ 37 CFR 1.1021

Deﬁnition ................................ 37 CFR 1.1001

Examination ............................ 37 CFR 1.1062

Fees ........................................ 37 CFR 1.1031

Notiﬁcation of Refusal .......... 37 CFR 1.1063

Signature ................................ 37 CFR 1.1022

Who may ﬁle .......................... 37 CFR 1.1011

International Preliminary Examining

Authority .................................................... 1.416

Interviews with examiner ........ 1.133 1.560 1.955

Invention promoters:

Complaints regarding .......................... 4.1 4.6

Publication of ............................ 4.1 4.3 4.5

Reply to .................................................... 4.4

Submission of .......................................... 4.3

Withdrawal of ...................................... 4.3(f)

Deﬁnition .............................................. 4.2(a)

Reply to complaint .................................... 4.4

Inventor (See also Applicant for patent, Application

for patent):

Death or legal incapacity of inventor ...... 1.43

In an international application ............ 1.421

Refuses to sign application ...................... 1.45

Unavailable .............................................. 1.45

Inventor’s certiﬁcate priority beneﬁt .............. 1.55

Inventorship and date of invention of the subject

matter of individual claims .......................... 1.110

Issue fee .......................................................... 1.18

Issue of patent. (See Allowance and issue of patent.)

Joinder of inventions in one application ...... 1.141

Joint inventors ................................................ 1.45

Joint patent to inventor and

assignee ...................................... 1.42 1.45 3.81

Jurisdiction:

After decision by Patent Trial and Appeal

Board .............................. 1.979 41.54 41.81

After notice of allowance ...................... 1.312

Over involved ﬁles .............................. 41.103

Lapsed patents .............................................. 1.317

Legal representative of deceased or incapacitated

inventor ................................................ 1.43 1.64

Legibility of papers .................................... 1.52(a)

Letters to the Ofﬁce. (See Correspondence.)

Library service fee ...................................... 1.19(c)

License and assignment of government interest in

patent .......................................... 3.11 3.31 3.41

License for foreign ﬁling ...................... 5.11 5.15

R-300January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

List of U.S. patents classiﬁed in a subclass, cost

of .............................................................. 1.19(d)

Lost ﬁles ...................................................... 1.251

Mail Stops:

Mail Stop 8 ........................................ 1.1(a)(3)

Mail Stop 24 ............................................ 4.3(c)

Mail Stop Assignment Recordation

Services ................................ 1.1(a)(4), 3.27

Mail Stop Congressional Relations ........ 150.6

Mail Stop Document Services .......... 1.1(a)(4)

Mail Stop Ex parte Reexam ............ 1.1(c)(1)

Mail Stop Hatch-Waxman PTE ............ 1.1(e)

Mail Stop Inter partes Reexam ...... 1.1(c)(2)

Mail Stop Interference ...................... 41.10(b)

Mail Stop L&R .......................................... 5.1

Mail Stop OED .......................................... 4.6

Mail Stop Patent Ext .............................. 1.1(e)

Mail Stop PCT

.................. 1.1(b) 1.417 1.434(a) 1.480(b)

Maintenance fees ............................................ 1.20

Acceptance of delayed payment of ........ 1.378

Address for payments .......................... 1.1(d)

Address for correspondence (applicant’s)

.............................................................. 1.363

Review of decision refusing to accept.... 1.377

Submission of ........................................ 1.366

Time for payment of .............................. 1.362

Mask work notice in speciﬁcation ............ 1.71(d)

Mask work notice on drawing .................... 1.84(s)

Mask work protection, foreign .......... 150.1 150.6

Micro entity status .......................................... 1.29

Microorganisms. (See Deposit of biological material.)

Minimum balance in deposit accounts ...... 1.25(a)

Missing pages when application ﬁled ........ 1.53(e)

Mistake in patent, certiﬁcate thereof

issued ................................................ 1.322 1.323

Models and exhibits:

Copies of .................................................. 1.95

Disposal without notice unless return

arrangements made ................................ 1.94

If on examination model found necessary request

therefor will be made .............................. 1.91

In contested cases ................................ 41.154

May be required .................................. 1.91(b)

Model not generally admitted in application or

patent .................................................. 1.91(a)

Not to be taken from the Ofﬁce except in custody

of sworn employee .................................. 1.95

Return of .................................................. 1.94

Working model may be required ........ 1.91(b)

Money. (See Fees and payment of money.)

Motions in interferences ............................ 41.121

To take testimony in foreign

country .......................................... 41.156(b)

Name of Applicant or Inventor (see Applicant for

patent, Application for patent, Inventor)

New matter inadmissible in application.... 1.121(f)

New matter inadmissible in reissue .......... 1.173(a)

Non-English language speciﬁcation fee.. 1.17(i)(1)

Nonproﬁt organization:

Deﬁnition ........................................ 1.27(a)(3)

Micro entity Status .................................. 1.29

Small entity status .................................... 1.27

Notice:

Of allowance of application .................... 1.311

Of appeal to the Court of Appeals for the Federal

Circuit .................................................... 90.2

Of arbitration award .............................. 1.335

Of defective ex parte reexamination

request .............................................. 1.510(c)

Of declaration of interference .............. 41.203

Of oral hearings before the Patent Trial and

Appeal Board .................. 41.47 41.73 42.70

Of rejection of an application ................ 1.104

Of taking testimony .......................... 41.157(c)

Nucleotide and/or amino acid sequences:

Amendments to ...................................... 1.825

Disclosure in patent applications ............ 1.821

Form and format for computer readable

form ...................................................... 1.824

Format for sequence data ...................... 1.822

Replacement of ...................................... 1.825

Requirements .......................................... 1.823

Submission on compact disc

.............................. 1.52 1.821 1.823 1.825

Symbols .................................................. 1.822

Oath in patent application. (See also Declaration):

Apostles .................................................... 1.66

Assignment may serve as inventor’s oath or

declaration .......................................... 1.63(e)

Before whom taken in foreign countries... 1.66

Before whom taken in United States ........ 1.66

By legal representative of deceased or legally

incapacitated person ...................... 1.43 1.64

Certiﬁcate of Ofﬁcer administering ........ 1.66

Continuation-in-part ............................ 1.63(d)

January 2018R-301

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Declaration .............................................. 1.68

Foreign language ...................................... 1.69

International application ........................ 1.497

Inventor’s Certiﬁcate .......................... 1.55(k)

Made by inventor ............................ 1.41 1.63

Made by someone other than inventor .... 1.64

Ofﬁcers authorized to administer oaths.... 1.66

Part of complete application .......... 1.51(b)(2)

Person making ................................ 1.63 1.64

Plant patent application .......................... 1.162

Reissue application ................................ 1.175

Requirements of ...................................... 1.63

Sealed ...................................................... 1.66

Signature to ............................ 1.63 1.64 1.67

Substitute statement .................................. 1.64

Supplemental .......................................... 1.67

To acknowledge duty of disclosure ...... 1.63(c)

When taken abroad to seal all papers ...... 1.66

Object of the invention .................................... 1.73

Ofﬁce action time for reply .......................... 1.134

Ofﬁce fees. (See Fees and payment of money.)

Ofﬁcial action, based exclusively upon the written

record .............................................................. 1.2

Ofﬁcial business, should be transacted in

writing ............................................................ 1.2

Ofﬁcial Gazette:

Amendments to rules published in ........ 1.351

Announces request for

reexamination .......................... 1.11(c) 1.904

Notice of issuance of ex parte reexamination

certiﬁcate .......................................... 1.570(f)

Notice of issuance of inter partes reexamination

certiﬁcate .......................................... 1.997(f)

Oral statements ................................................ 1.2

Payment of fees, Method ................................ 1.23

Paper, deﬁnition of ............................................ 1.9

Papers (requirements to become part of Ofﬁce

permanent records) ........................................ 1.52

Papers not received on Saturday, Sunday, or

holidays .................................................. 1.6(a)(1)

Patent application. (See Application for patent and

Provisional patent applications.)

Patent application publication. (See Published

application.)

Patent attorneys and agents. (See Attorneys and

agents.)

Patent Cooperation Treaty:

Access to international application ﬁles

.......................................................... 1.14(g)

Amendments and corrections during international

processing ............................................ 1.471

Amendments during international preliminary

examination .......................................... 1.485

Applicant for international

application ................................ 1.421 1.424

Assignee, obligated assignee, or person having

sufﬁcient proprietary interest .............. 1.424

Changes in person, name or address, where

ﬁled ........................................ 1.421(f) 1.472

Conduct of international preliminary

examination .......................................... 1.484

Copies of international application ﬁles

.......................................................... 1.14(g)

Deﬁnition of terms ................................ 1.401

Delays in meeting time limits ................ 1.468

Demand for international preliminary

examination .......................................... 1.480

Designation of States .............................. 1.432

Entry into national stage .............. 1.491 1.495

Examination at national stage ................ 1.496

Fees:

Authorization to charge fees under 37 CFR 1.16

........................................................ 1.25(b)

Due on ﬁling of international

application. .................................... 1.431(c)

Failure to pay results in withdrawal of

application .................................... 1.431(d)

Filing, processing and search fees ...... 1.445

International Filing Fee.... 1.431(c) 1.445(b)

International preliminary

examination ............................ 1.481 1.482

National stage ........................ 1.25(b) 1.492

Refunds ................................................ 1.446

Filing by other than inventor ............ 1.421(b)

International application requirements.... 1.431

Abstract ................................................ 1.438

Claims .................................................. 1.436

Description .......................................... 1.435

Drawings .............................................. 1.437

Physical requirements .......................... 1.433

Request ................................................ 1.434

International Bureau .............................. 1.415

International Preliminary Examining

Authority .............................................. 1.416

Inventor deceased or legally

incapacitated ........................................ 1.422

Inventors, joint .................... 1.421(b) 1.497(a)

National stage in the United States:

Commencement .................................. 1.491

Entry ........................................ 1.491 1.495

R-302January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

Examination ........................................ 1.496

Fees ........................................ 1.25(b) 1.492

Oath or declaration at national stage ...... 1.497

Priority, claim for .............. 1.55 1.451 1.452

Record copy to International Bureau, transmittal

procedures ............................................ 1.461

Representation by attorney or agent ...... 1.455

Time limits for processing

applications ................................ 1.465 1.468

United States as:

Designated or Elected Ofﬁce .............. 1.414

International Searching Authority ........ 1.413

Receiving Ofﬁce .................................. 1.412

Unity of invention:

Before International Searching

Authority ................................ 1.475 1.476

Before International Preliminary Examining

Authority ............................................ 1.488

National stage .......................... 1.475 1.499

Protest to lack of ...................... 1.477 1.489

Patent term adjustment due to examination

delay ................................................ 1.702 1.705

Application for ...................................... 1.705

Determination ........................................ 1.705

Grounds for .......................................... 1.702

Period of adjustment .............................. 1.703

Reduction of period of adjustment ........ 1.704

Patent term extension due to examination delay

.................................................................... 1.701

Patent term extension due to regulatory review period.

(See Extension of patent term due to regulatory

review period (35 U.S.C. 156).)

Patent Trial and Appeal Board. (See Appeals.)

Patent Trial Practice and Procedure:

Action by patent owner ............................ 42.9

Certiﬁcate .............................................. 42.80

Citation of authority .............................. 42.13

Conduct of the proceeding ...................... 42.5

Counsel .................................................. 42.10

Deﬁnitions ................................................ 42.2

Duty of Candor ...................................... 42.11

Fees ........................................................ 42.15

Filing of documents, including exhibits.... 42.6

Judgment ................................................ 42.73

Jurisdiction .............................................. 42.3

Management of the record ........................ 42.7

Mandatory notices .................................... 42.8

Notice of trial .......................................... 42.4

Oral Argument ........................................ 42.70

Petitions and Motions Practice:

Content of petitions and motions ........ 42.22

Default ﬁling times .............................. 42.25

Decision on petitions or motions ........ 42.71

Generally .............................................. 42.20

Notice of basis for relief ...................... 42.21

Oppositions and replies ........................ 42.23

Page and word count limits for petitions,

motions, oppositions, and replies ...... 42.24

Policy ........................................................ 42.1

Public Availability .................................. 42.14

Sanctions ................................................ 42.12

Service of documents .............................. 42.6

Settlement .............................................. 42.74

Testimony and Production

Admissibility ........................................ 42.61

Applicability of the Federal rules of

evidence ............................................ 42.62

Compelling testimony and

production .......................................... 42.52

Conﬁdential information in a petition.. 42.55

Discovery ............................................ 42.51

Expert testimony; tests and data .......... 42.54

Expungement of conﬁdential

information ........................................ 42.56

Form of evidence ................................ 42.63

Objection; motion to exclude; motion in

limine ................................................ 42.64

Protective order .................................... 42.54

Taking testimony .................................. 42.53

Termination of trial ................................ 42.72

Patents (See also Allowance and issue of patent):

Available for license or sale, publication of

notice .................................................. 1.21(i)

Certiﬁed copies of .................................... 1.13

Correction of errors in ...... 1.171 1.322 1.324

Delivery of .............................................. 1.315

Disclaimer .............................................. 1.321

Identiﬁcation required in letters

concerning ................................................ 1.5

Lapsed, for nonpayment of issue fee ...... 1.317

Price of copies .......................................... 1.19

Records of, open to public .............. 1.11 1.12

Reissuing of, when defective ...... 1.171 1.178

Payment of fees .............................................. 1.23

Personal attendance unnecessary ...................... 1.2

Petition for reissue ............................ 1.171 1.172

Petition to the Director:

Fees .......................................................... 1.17

For delayed payment of issue fee .......... 1.137

For expungement of papers ...................... 1.59

For extension of time .............................. 1.136

For license for foreign ﬁling .................... 5.12

January 2018R-303

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

For the revival of an abandoned

application ............................................ 1.137

From formal objections or

requirements .......................... 1.113(a) 1.181

From requirement for

restriction .................... 1.129(b)(2)(iii) 1.144

General requirements ............................ 1.181

In interferences ........................................ 41.3

In reexamination .................................... 1.181

If examiner refused the ex parte

request ............................................ 1.515(c)

On refusal of examiner to admit

amendment .......................................... 1.127

Questions not speciﬁcally provided for... 1.182

Suspension of rules ................................ 1.183

Petition to accept an unintentionally delayed

claim for domestic beneﬁt

.......................................... 1.78(b) 1.78(d)

Petition to accept an unintentionally delayed

claim for foreign priority ................ 1.55(e)

To exercise supervisory authority... 1.181(a)(3)

To make special .................. 1.102(c) 1.102(d)

Untimely unless ﬁled within two months

.......................................................... 1.181(f)

Photographs .................................... 1.84(b) 1.152

Plant patent applications:

Applicant ................................................ 1.162

Claim ...................................................... 1.164

Declaration ............................................ 1.162

Description ............................................ 1.162

Drawings ................................................ 1.165

Examination .......................................... 1.167

Fee for copies .......................................... 1.19

Filing fee .............................................. 1.16(c)

Issue fee .............................................. 1.18(c)

Oath ........................................................ 1.162

Rules applicable .................................... 1.161

Speciﬁcation and arrangement of application

elements .............................................. 1.163

Specimens .............................................. 1.166

Post issuance and reexamination fees ............ 1.20

Post-grant review:

Amendment of the patent .................... 42.221

Content of the petition .......................... 42.204

Discovery .............................................. 42.224

Fee ........................................................ 42.203

Filing date ............................................ 42.206

Filing of supplemental information ...... 42.223

Institution of inter partes review ........ 42.208

Multiple proceedings and joinder ........ 42.222

Pendency .............................................. 42.200

Preliminary response to petition .......... 42.207

Procedure .............................................. 42.200

Response by patent owner .................... 42.220

Service of petition ................................ 42.205

Time for ﬁling ...................................... 42.202

Who may petition ................................ 42.201

Post Ofﬁce receipt as ﬁling date ............ 1.10(a)(2)

Postal emergency or interruption .......... 1.10(g)-(i)

Power of attorney. (See Attorneys or agents.)

Power to inspect ........................................ 1.14(c)

Preissuance submissions by third parties ...... 1.290

Preliminary amendments ............................ 1.115

Preliminary Examining Authority,

International ................................................ 1.416

Preserved in conﬁdence, applications.... 1.12 1.14

Exceptions (status, access or copies

available) ................................................ 1.14

Prior art citation in patented ﬁles .................. 1.501

Prior art statement:

Content of ................................................ 1.98

To comply with duty of disclosure

requirement ............................................ 1.56

Prior art submission by third party:

In patent application .............................. 1.290

In patent ﬁle .......................................... 1.501

In protest against pending unpublished

application ............................................ 1.291

Prior invention, afﬁdavit or declaration of to

overcome rejection .......................... 1.130 1.131

Priority, right of, under treaty or law:

Domestic beneﬁt claim:

Cross-reference to related application(s)

.................................................... 1.76 1.78

Filing fee must be paid in provisional

application .......................................... 1.78

Indication of whether international application

was published in English .......... 1.78(a)(2)

Must be on application data

sheet ............ 1.76(a) 1.78(a)(3) 1.78(c)(2)

Petition to accept, unintentionally

delayed ............................................ 1.78(d)

Translation of non-English language

provisional application required

.................................................... 1.78(a)(5)

Waived if not timely ... 1.78(a)(4) 1.78(c)(3)

Foreign priority claim:

Filed after issue fee has been paid .... 1.55(g)

Must be on application data

sheet .................................. 1.55(d) 1.76(a)

Petition to accept, unintentionally delayed

................................................ 1.55 1.78(b)

R-304January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

Priority document ................................ 1.55

Time for claiming .................................. 1.55

Privacy Act .................................... 102.21 102.34

Denial of access to records ............ 102.25(g)

Deﬁnitions .......................................... 102.22

Disclosure of records .............. 102.25 102.30

Exemptions ............................ 102.33 102.34

Fees ...................................................... 102.31

Grant of access to records .............. 102.25(b)

Inquiries .............................................. 102.23

Medical records .................................. 102.26

Penalties .............................................. 102.32

Requests for records ............................ 102.24

Requests for correction or amendment

............................................................ 102.27

Appeal of initial adverse determination

.......................................................... 102.29

Review of requests ............................ 102.28

Processing fees .................................... 1.17 1.445

Proclamation as to protection of foreign mask

works ................................................ 150.1 150.6

Protests to grants of patent ............................ 1.291

Provisional applications:

Claiming the beneﬁt of ............................ 1.78

Converting a nonprovisional to a

provisional .................................... 1.53(c)(2)

Converting a provisional to a nonprovisional

...................................................... 1.53(c)(3)

Cover sheet required by § 1.51(c)(1) may be a §

1.76 application data sheet .......... 1.53(c)(1)

Deﬁnition .......................................... 1.9(a)(2)

Filing date ............................................ 1.53(c)

Filing fee .............................................. 1.16(d)

General requisites ................................ 1.51(c)

Later ﬁling of fee and cover sheet ...... 1.53(g)

Names of inventor(s) ............................ 1.41(a)

Application data sheet ........ 1.53(c)(1) 1.76

Correction of ........................................ 1.48

Cover sheet ................ 1.51(c)(1) 1.53(c)(1)

Joint inventors ...................................... 1.45

No right of priority .......................... 1.53(c)(4)

No examination .................................... 1.53(i)

Papers concerning, should identify provisional

application as such, by application

number .................................................. 1.5(f)

Parts of complete provisional

application .......................................... 1.51(c)

Processing fees .................................... 1.17(q)

Revival of .......................................... 1.137(g)

When abandoned .................................. 1.53(i)

Provisional rights:

Submission of international publication or

English translation thereof pursuant to 35 U.S.C.

154(d)(4) .............................................. 1.417

Public Information .......................... 102.1 102.34

Publication of application ............................ 1.211

Early publication .................................. 1.219

Express abandonment to avoid publication

.......................................................... 1.138(c)

Fee ...................................................... 1.18(d)

Nonpublication request ........................ 1.213

Publication of redacted copy ................ 1.217

Republication ........................................ 1.221

Voluntary publication ............................ 1.221

Published application:

Access to ........................................ 1.11 1.14

Certiﬁed copies of .................................. 1.13

Contents ................................................ 1.215

Deﬁnition .............................................. 1.9(c)

Preissuance submission in .................... 1.290

Records of, open to public .............. 1.11 1.12

Republication of .................................... 1.221

Reasons for allowance .................................. 1.104

Reconsideration of Ofﬁce action .................. 1.112

Reconstruction of lost ﬁles .......................... 1.251

Recording of assignments. (See Assignments and

recording.)

Records of the Patent and Trademark

Ofﬁce .................................................. 1.11 1.15

Reexamination:

Announcement in Ofﬁcial Gazette ...... 1.11(c)

Correction of inventorship .................... 1.530

Correspondence address ...................... 1.33(c)

Ex parte proceedings: ................ 1.501 1.570

Amendments, manner of

making ............................ 1.121(j) 1.530(d)

Appeal to Board ........................ 41.30 41.54

Concurrent with interference, reissue, other

reexamination, litigation, or ofﬁce

proceeding(s) ...................................... 1.565

Conduct of .......................................... 1.550

Duty of disclosure in ............................ 1.555

Examiner’s determination to grant or refuse

request for .......................................... 1.515

Extensions of time in ...................... 1.550(c)

Initiated by the Director ...................... 1.520

Interviews in ........................................ 1.560

Issuance and publication of certiﬁcate

concludes ............................................ 1.570

Order for reexamination by examiner... 1.525

January 2018R-305

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Patent owner’s statement .................... 1.530

Processing of prior art citations

during ................................................ 1.502

Reply to patent owner’s statement to third party

requester ............................................ 1.535

Request for .......................................... 1.510

Scope of .............................................. 1.552

Service of papers .................................. 1.248

Examiner’s action. .................................. 1.104

Fee ........................................................ 1.20(c)

Fees may be charged to deposit

account .............................................. 1.25(b)

Identiﬁcation in letter ............................ 1.5(d)

Inter partes proceedings ............ 1.902 1.997

Amendments, manner of

making ................ 1.121(j) 1.530(d) 1.941

Appeal to Board ........................ 41.60 41.81

Appeal to C.A.F.C. .................. 1.983 41.81

Concurrent with interference, reissue, other

reexamination, litigation, or ofﬁce

proceeding(s) .......................... 1.565 1.985

Conduct of .......................................... 1.937

Duty of disclosure in ................ 1.555 1.933

Examiner’s determination to grant or refuse

request for .......................................... 1.923

Extensions of time in .......................... 1.956

Filing date of request for ...................... 1.919

Issuance of certiﬁcate at conclusion

of ........................................................ 1.997

Merged with concurrent reexamination

proceedings ........................................ 1.989

Merged with reissue application .......... 1.991

Notice of, in the Ofﬁcial Gazette ........ 1.904

Persons eligible to ﬁle request for ...... 1.913

Processing of prior art citations

during ................................................ 1.902

Scope of .............................................. 1.906

Service of papers ...................... 1.248 1.903

Submission of papers by the public.... 1.905

Subsequent requests for ...................... 1.907

Suspension due to concurrent

interference ........................................ 1.993

Suspension due to litigation ................ 1.987

Information Disclosure

Statements ........................ 1.98 1.555 1.933

Open to public .................................... 1.11(d)

Reconsideration before ﬁnal action ........ 1.112

Refund of fee ............................................ 1.26

Reply to action ...................................... 1.111

Revival of terminated or limited reexamination

prosecution .......................................... 1.137

Reference characters in drawings ...... 1.74 1.84(p)

References cited on examination .................. 1.104

Reference ﬁling .......................................... 1.57(a)

Refund of money paid by mistake .................. 1.26

International applications ...................... 1.446

Later establishment of small entity status

................................................................ 1.28

Time period for requesting ................ 1.26(b)

Rehearing:

On appeal to Board ...................... 41.52 41.79

Request for, time for appeal after action

on .............................................. 41.31 41.61

Reissues:

Amendments .......................................... 1.173

Applicants, assignees ............................ 1.172

Application for reissue .......................... 1.171

Application made and sworn to by inventor, if

living .................................................... 1.172

Continuing duty of applicant .................. 1.178

Declaration ............................................ 1.175

Drawings ................................................ 1.173

Examination of reissue .......................... 1.176

Filed during ex parte reexamination ...... 1.565

Filed during inter partes

reexamination ...................................... 1.985

Filing fee .................................................. 1.16

Filing of announcement in Ofﬁcial

Gazette .................................................... 1.11

Grounds for and requirements.... 1.171 1.178

Issue fee .............................................. 1.18(a)

Multiple applications for reissue of a single

patent .................................................. 1.177

Oath ........................................................ 1.175

Open to public .......................................... 1.11

Original patent surrendered .................... 1.178

Restriction .............................................. 1.176

Speciﬁcation .......................................... 1.173

Take precedence in order of

examination .......................................... 1.176

To contain no new matter .................. 1.173(a)

What must accompany

application ................................ 1.171 1.172

Rejection:

After two rejections appeal may be taken from

examiner to Board ................................ 41.31

Applicant will be notiﬁed of rejection with

reasons and references ................ 1.104(a)(2)

Based on commonly owned prior art, how

overcome .............................................. 1.131

R-306January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

Examiner may rely on admissions by applicant

or patent owner, or facts within examiner’s

knowledge .................................... 1.104(c)(3)

Final ........................................................ 1.113

Formal objections .......................... 1.104(a)(2)

References will be cited .................... 1.104(d)

Reply brief .................................................... 41.41

Reply to Ofﬁce action:

Abandonment for failure to .................... 1.135

By applicant or patent owner .................. 1.111

Substantially complete .......................... 1.135

Supplemental ................................ 1.111(a)(2)

Time for .................................................. 1.134

Representative capacity .............................. 1.34(a)

Request for continued examination .............. 1.114

Fee ........................................................ 1.17(e)

Suspension of action after .................. 1.103(c)

Request for reconsideration .......................... 1.112

Request for ex parte reexamination ............ 1.510

Request for inter partes

reexamination ........................ 1.903 1.913 1.927

Requirement for submission of information.. 1.105

Reservation clauses not permitted .................. 1.79

Restoration of Beneﬁt ................................ 1.78(b)

Restoration of Right of Priority ................ 1.55(c)

Restriction of application. ...... 1.141 1.146 1.176

Claims to nonelected invention

withdrawn ........................................ 1.142(b)

Constructive election .............................. 1.145

Petition from requirements for.... 1.129 1.144

Provisional election ................................ 1.143

Reconsideration of requirement ............ 1.143

Requirement for ...................................... 1.142

Subsequent presentation of claims for different

invention .............................................. 1.145

Return of correspondence ............................ 1.5(a)

Revival of abandoned application, terminated or

limited reexamination prosecution, or lapsed patent

.................................................................... 1.137

Unintentional abandonment fee .......... 1.17(m)

Revocation of power of attorney or authorization of

agent .......................................................... 1.36(a)

Rules of Practice, amendments to rules will be

published .................................................... 1.351

Saturday, when last day falls on ........................ 1.7

Secrecy order ............................................ 5.1 5.5

Sequences:

Amendments to sequence listing and computer

readable copy ........................................ 1.825

Disclosure requirements .............. 1.821 1.823

Sequence data, symbols and format ...... 1.822

Submissions in computer readable

form ...................................................... 1.824

Submissions on compact disc in lieu of

paper .................. 1.52(e)(1)(ii) 1.821 1.823

Serial number of application ............................ 1.5

Service of notices in interference cases ...... 41.106

Service of papers .......................................... 1.248

Service of process ...................... 15 CFR 15.1-15.3

Shortened period for reply ............................ 1.134

Signature:

EFS character coded .......................... 1.4(d)(3

Handwritten ...................................... 1.4(d)(1)

Implicit certiﬁcations .................. 1.4(d) 11.18

S-signature ........................................ 1.4(d)(2)

To a written assertion of small entity status

...................................................... 1.27(c)(2)

To amendments and other papers ...... 1.33(b)

To an application for extension of patent term

.............................................................. 1.730

To express abandonment .................... 1.138(b)

To oath ...................................................... 1.63

To reissue oath or declaration ................ 1.172

When copy is acceptable ............................ 1.4

Small business concern:

Deﬁnition ............................................ 1.27(a)

Micro entity status .................................... 1.29

Small entity status .................................... 1.27

Small entity:

Deﬁnition ............................................ 1.27(a)

Errors in status excused ............................ 1.28

Fraud on the ofﬁce .............................. 1.27(h)

License to Federal agency .............. 1.27(a)(4)

Statement ............................................ 1.27(c)

Statement in parent application ...... 1.27(c)(4)

Status establishment .................. 1.27(g) 1.28

Status update .................................. 1.27 1.28

Solicitor’s address .................................... 1.1(a)(3)

Species of invention claimed ............ 1.141 1.146

Speciﬁcation (See also Application for patent,

Claims):

Abstract ................................................ 1.72(b)

Amendments to .......................... 1.121 1.125

Arrangement of .................. 1.77 1.154 1.163

Best mode ............................................ 1.71(b)

Claim(s) .................................................... 1.75

Commence on separate sheet .............. 1.71(f)

Contents of ...................................... 1.71 1.75

January 2018R-307

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Cross-references to other

applications .................................... 1.78(c)(5)

Description of the invention .................... 1.71

If defective, reissue to correct.... 1.171 1.178

Mask work notice ................................ 1.71(d)

Must conclude with speciﬁc and distinct

claim .................................................. 1.75(a)

Must point out new improvements

speciﬁcally ........................................ 1.71(c)

Must refer by ﬁgures to drawings ............ 1.74

Must set forth the precise invention.... 1.71(b)

Object of the invention ............................ 1.73

Order of arrangement in framing .............. 1.77

Paper, writing, margins ............................ 1.52

Paragraph numbering ...................... 1.52(b)(6)

Part of complete application .......... 1.51(b)(1)

Reference to drawings .............................. 1.74

Requirements of .............................. 1.71 1.75

Reservation clauses not permitted ............ 1.79

Separate from other parts of

application .......................................... 1.71(f)

Substitute ................................................ 1.125

Summary of the invention ........................ 1.73

Title of the invention ............................ 1.72(a)

To be rewritten, if necessary .................. 1.125

Specimens. (See Models and exhibits.)

Specimens of composition of matter to be furnished

when required ................................................ 1.93

Specimens of plants ...................................... 1.166

Statement of status as small entity .................. 1.27

Status information .......................................... 1.14

Statutory disclaimer fee .............................. 1.20(d)

Submission of international publication or English

translation thereof pursuant to 35 U.S.C. 154(d)(4)

.................................................................... 1.417

Sufﬁcient funds in deposit account ................ 1.25

Summary of invention .................................... 1.73

Sunday, when last day falls on .......................... 1.7

Supervisory authority, petition to Director to

exercise .............................................. 1.181(a)(3)

Supplemental examination of patents:

Conclusion of ........................................ 1.625

Conduct of ............................................ 1.620

Content of request .................................. 1.610

Filing of papers in supplemental

examination .......................................... 1.601

Format of papers ﬁled ............................ 1.615

Procedure after conclusion .................... 1.625

Publication of certiﬁcate ........................ 1.625

Supplemental oath /declaration ...................... 1.67

Surcharge for oath or basic ﬁling fee ﬁled after ﬁling

date .............................................. 1.16(f) 1.53(f)

Suspension of action .................................... 1.103

Suspension of rules ...................................... 1.183

Symbols for drawings ................................ 1.84(n)

Symbols for nucleotide and/or amino acid sequence

data .............................................................. 1.822

Tables in patent applications .......................... 1.58

Terminal disclaimer ...................................... 1.321

Testimony by Ofﬁce

employees ............................ 15 CFR 15.11-15.18

Testimony in cases before the

Board .......... 41.156 41.158 42.52 42.53 42.65

Compelling testimony and

production ................................ 41.156 42.52

Expert testimony ........................ 41.158 42.65

Taking testimony ...................... 41.157 42.53

Third party submission in application

.......................................................... 1.290 1.291

Time expiring on Saturday, Sunday, or

holiday ............................................................ 1.7

Time for claiming beneﬁt of prior (domestic)

application .................................................... 1.78

Time for claiming foreign priority ................ 1.55

Time for ﬁling preliminary amendment to ensure

entry thereof ...................................... 1.115(a)(3)

Time for payment of issue fee .................. 1.311(a)

Time for payment of publication fee ........ 1.311(a)

Time for reply by applicant.... 1.134 1.135 1.136

Time for reply to Ofﬁce action .......... 1.134 1.136

Time for requesting a refund ...................... 1.26(b)

Time, periods of ................................................ 1.7

Timely ﬁling of correspondence .............. 1.8 1.10

Title of invention ........................................ 1.72(a)

Title reports, fee for .............................. 1.19(b)(4)

Transitional procedures ................................ 1.129

Transitional program for covered business method

patent review:

Content of petition ................................ 42.304

Deﬁnitions ............................................ 42.300

Pendency .............................................. 42.300

Procedure .............................................. 42.300

Time for ﬁling ...................................... 42.303

Who may petition ................................ 42.302

Trial practice before the Board .......... 42.1 42.412

Unintentional abandonment .................... 1.137(b)

United States as

R-308January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

Designated Ofﬁce .................................. 1.414

Elected Ofﬁce ........................................ 1.414

International Preliminary Examining

Authority .............................................. 1.416

International Searching Authority .......... 1.413

Receiving Ofﬁce .................................... 1.412

Unlocatable ﬁles .......................................... 1.251

Unsigned continuation or divisional

application .................................. 1.53 1.63(d)(1)

Use of ﬁle of parent application ................ 1.53(d)

Waiver of conﬁdentiality ...................... 1.53(d)(6)

Withdrawal from issue .................................. 1.313

Withdrawal of attorney or agent ................ 1.36(b)

PRACTICE BEFORE THE PATENT AND

TRADEMARK OFFICE

PART 10 — [Reserved]

PART 11 — REPRESENTATION OF OTHERS

BEFORE THE UNITED STATES PATENT AND

TRADEMARK OFFICE

General Provisions

GENERAL INFORMATION

Sec.

11.1 Deﬁnitions.

11.2 Director of the Ofﬁce of Enrollment and

Discipline.

11.3 Suspension of rules.

Recognition To Practice Before the USPTO

PATENTS, TRADEMARKS, AND OTHER

NON-PATENT LAW

Sec.

11.4 [Reserved]

11.5 Register of attorneys and agents in patent

matters; practice before the ofﬁce.

11.6 Registration of attorneys and agents.

11.7 Requirements for registration.

11.8 Oath and registration fee.

11.9 Limited recognition in patent matters.

11.10 Restrictions on practice in patent matters.

11.11 Administrative suspension, inactivation,

resignation, and readmission.

11.12 - 11.13 [Reserved]

11.14 Individuals who may practice before the

Ofﬁce in trademark and other non-patent

matters.

11.15 Refusal to recognize a practitioner.

11.16 Requirements for admission to the USPTO

Law School Clinic Certiﬁcation Program.

11.17 Requirements for participation in the

USPTO Law School Clinic Certiﬁcation

Program.

11.18 Signature and certiﬁcate for

correspondence ﬁled in the Ofﬁce.

Investigations and Disciplinary Proceedings; Jurisdiction,

Sanctions, Investigations, and Proceedings

11.19 Disciplinary jurisdiction; Jurisdiction to

transfer to disability inactive status.

11.20 Disciplinary sanctions; Transfer to

disability inactive status.

11.21 Warnings.

11.22 Disciplinary Investigations.

11.23 Committee on Discipline.

11.24 Reciprocal discipline.

11.25 Interim suspension and discipline based

upon conviction of committing a serious

crime.

11.26 Settlement.

11.27 Exclusion on consent.

11.28 Incapacitated practitioners in a disciplinary

proceeding.

11.29 Reciprocal transfer or initial transfer to

disability inactive status.

11.30 - 11.31 [Reserved]

11.32 Instituting a disciplinary proceeding.

11.33 [Reserved]

11.34 Complaint.

11.35 Service of complaint.

11.36 Answer to complaint.

11.37 [Reserved]

11.38 Contested case.

11.39 Hearing ofﬁcer; appointment;

responsibilities; review of interlocutory

orders; stays.

11.40 Representative for OED Director or

respondent.

11.41 Filing of papers.

11.42 Service of papers.

11.43 Motions.

11.44 Hearings.

11.45 Amendment of pleadings.

11.46 - 11.48 [Reserved]

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CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

11.49 Burden of proof.

11.50 Evidence.

11.51 Depositions.

11.52 Discovery.

11.53 Proposed ﬁndings and conclusions;

post-hearing memorandum.

11.54 Initial decision of hearing ofﬁcer.

11.55 Appeal to the USPTO Director.

11.56 Decision of the USPTO Director.

11.57 Review of ﬁnal decision of the USPTO

Director.

11.58 Duties of disciplined or resigned

practitioner, or practitioner on disability

inactive status.

11.59 Dissemination of disciplinary and other

information.

11.60 Petition for reinstatement.

11.61 [Reserved]

11.62 -11.99 [Reserved]

USPTO Rules of Professional Conduct

Sec.

11.100 [Reserved]

CLIENT-PRACTITIONER RELATIONSHIP

11.101 Competence.

11.102 Scope of representation and allocation of

authority between client and practitioner.

11.103 Diligence.

11.104 Communication.

11.105 Fees.

11.106 Conﬁdentiality of information.

11.107 Conﬂict of interest; Current clients.

11.108 Conﬂict of interest; Current clients;

Speciﬁc rules.

11.109 Duties to former clients.

11.110 Imputation of conﬂicts of interest; General

rule.

11.111 Former or current Federal Government

employees.

11.112 Former judge, arbitrator, mediator or other

third-party neutral.

11.113 Organization as client.

11.114 Client with diminished capacity.

11.115 Safekeeping property.

11.116 Declining or terminating representation.

11.117 Sale of law practice.

11.118 Duties to prospective client.

11.119 - 11.200 [Reserved]

COUNSELOR

11.201 Advisor.

11.202 [Reserved]

11.203 Evaluation for use by third persons.

11.204 Practitioner serving as third-party neutral.

11.205 - 11.300 [Reserved]

ADVOCATE

11.301 Meritorious claims and contentions.

11.302 Expediting proceedings.

11.303 Candor toward the tribunal.

11.304 Fairness to opposing party and counsel.

11.305 Impartiality and decorum of the tribunal.

11.306 Trial publicity.

11.307 Practitioner as witness.

11.308 [Reserved]

11.309 Advocate in nonadjudicative proceedings.

11.310 - 11.400 [Reserved]

TRANSACTIONS WITH PERSONS OTHER THAN

CLIENTS

11.401 Truthfulness in statements to others.

11.402 Communication with person represented

by a practitioner.

11.403 Dealing with unrepresented person.

11.404 Respect for rights of third persons.

11.405 - 11.500 [Reserved]

LAW FIRMS AND ASSOCIATIONS

11.501 Responsibilities of partners, managers, and

supervisory practitioners.

11.502 Responsibilities of a subordinate

practitioner.

11.503 Responsibilities regarding non-practitioner

assistance.

11.504 Professional independence of a

practitioner.

11.505 Unauthorized practice of law.

11.506 Restrictions on right to practice.

11.507 Responsibilities regarding law-related

services.

11.508 - 11.700 [Reserved]

INFORMATION ABOUT LEGAL SERVICES

11.701 Communications concerning a

practitioner’s services.

11.702 Advertising.

11.703 Direct contact with prospective clients.

R-310January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

11.704 Communication of ﬁelds of practice and

specialization.

11.705 Firm names and letterheads.

11.706 - 11.800 [Reserved]

MAINTAINING THE INTEGRITY OF THE

PROFESSION

11.801 Registration, recognition and disciplinary

matters.

11.802 Judicial and legal ofﬁcials.

11.803 Reporting professional misconduct.

11.804 Misconduct.

11.805 - 11.900 [Reserved]

11.901 Savings clause.

Subpart A — General Provisions

GENERAL INFORMATION

§ 11.1 Deﬁnitions.

This part governs solely the practice of patent,

trademark, and other law before the United States

Patent and Trademark Ofﬁce. Nothing in this part

shall be construed to preempt the authority of each

State to regulate the practice of law, except to the

extent necessary for the United States Patent and

Trademark Ofﬁce to accomplish its Federal

objectives. Unless otherwise clear from the context,

the following deﬁnitions apply to this part:

Attorney or lawyer means an individual who is an

active member in good standing of the bar of the

highest court of any State. A non-lawyer means a

person who is not an attorney or lawyer.

Belief or believes means that the person involved

actually supposed the fact in question to be true. A

person’s belief may be inferred from circumstances.

Conﬁrmed in writing, when used in reference to

the informed consent of a person, means informed

consent that is given in writing by the person or a

writing that a practitioner promptly transmits to the

person conﬁrming an oral informed consent. If it is

not feasible to obtain or transmit the writing at the

time the person gives informed consent, then the

practitioner must obtain or transmit it within a

reasonable time thereafter.

Conviction or convicted means any confession to

a crime; a verdict or judgment ﬁnding a person

guilty of a crime; any entered plea, including nolo

contendre or Alford plea, to a crime; or receipt of

deferred adjudication (whether judgment or sentence

has been entered or not) for an accused or pled

crime.

Crime means any offense declared to be a felony

or misdemeanor by Federal or State law in the

jurisdiction where the act occurs.

Data sheet means a form used to collect the name,

address, and telephone information from individuals

recognized to practice before the Ofﬁce in patent

matters.

Disqualiﬁed means any action that prohibits a

practitioner from participating in or appearing before

the program or agency, regardless of how long the

prohibition lasts or the speciﬁc terminology used.

Federal agency means any authority of the

executive branch of the Government of the United

States.

Federal program means any program established

by an Act of Congress or administered by a Federal

agency.

Firm or law ﬁrm means a practitioner or

practitioners in a law partnership, professional

corporation, sole proprietorship or other association

authorized to practice law; or practitioners employed

in a legal services organization or the legal

department of a corporation or other organization.

Fiscal year means the time period from October

1st through the ensuing September 30th.

Fraud or fraudulent means conduct that involves

a misrepresentation of material fact made with intent

to deceive or a state of mind so reckless respecting

consequences as to be the equivalent of intent, where

there is justiﬁable reliance on the misrepresentation

by the party deceived, inducing the party to act

January 2018R-311

§ 11.1CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

thereon, and where there is injury to the party

deceived resulting from reliance on the

misrepresentation. Fraud also may be established

by a purposeful omission or failure to state a

material fact, which omission or failure to state

makes other statements misleading, and where the

other elements of justiﬁable reliance and injury are

established.

Good moral character and reputation means the

possession of honesty and truthfulness,

trustworthiness and reliability, and a professional

commitment to the legal process and the

administration of justice, as well as the condition of

being regarded as possessing such qualities.

Grievance means a written submission from any

source received by the OED Director that presents

possible grounds for discipline of a speciﬁed

practitioner.

Informed consent means the agreement by a person

to a proposed course of conduct after the practitioner

has communicated adequate information and

explanation about the material risks of and

reasonably available alternatives to the proposed

course of conduct.

Knowingly, known, or knows means actual

knowledge of the fact in question. A person’s

knowledge may be inferred from circumstances.

Law-related services means services that might

reasonably be performed in conjunction with and

in substance are related to the provision of legal

services, and that are not prohibited as unauthorized

practice of law when provided by a non-lawyer.

OED means the Ofﬁce of Enrollment and

Discipline.

OED Director means the Director of the Ofﬁce of

Enrollment and Discipline.

OED Director’s representatives means attorneys

within the USPTO Ofﬁce of General Counsel who

act as representatives of the OED Director.

Ofﬁce means the United States Patent and

Trademark Ofﬁce.

Partner means a member of a partnership, a

shareholder in a law ﬁrm organized as a professional

corporation, or a member of an association

authorized to practice law.

Person means an individual, a corporation, an

association, a trust, a partnership, and any other

organization or legal entity.

Practitioner means:

(1) An attorney or agent registered to practice

before the Ofﬁce in patent matters;

(2) An individual authorized under 5 U.S.C.

500(b), or otherwise as provided by § 11.14(a), (b),

and (c), to practice before the Ofﬁce in trademark

matters or other non-patent matters;

(3) An individual authorized to practice before

the Ofﬁce in a patent case or matters under § 11.9(a)

or (b); or

(4) An individual authorized to practice before

the Ofﬁce under § 11.16(d).

Proceeding before the Ofﬁce means an application

for patent, an application for reissue, a

reexamination, a protest, a public use matter, an

inter partes patent matter, correction of a patent,

correction of inventorship, an application to register

a trademark, an inter partes trademark matter, an

appeal, a petition, and any other matter that is

pending before the Ofﬁce.

Reasonable or reasonably when used in relation

to conduct by a practitioner means the conduct of a

reasonably prudent and competent practitioner.

Reasonable belief or reasonably believes when used

in reference to a practitioner means that the

practitioner believes the matter in question and that

the circumstances are such that the belief is

reasonable.

Reasonably should know when used in reference

to a practitioner means that a practitioner of

reasonable prudence and competence would

ascertain the matter in question.

R-312January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.1

Registration means registration to practice before

the Ofﬁce in patent proceedings.

Roster means a list of individuals who have been

registered as either a patent attorney or patent agent.

Screened means the isolation of a practitioner from

any participation in a matter through the timely

imposition of procedures within a ﬁrm that are

reasonably adequate under the circumstances to

protect information that the isolated practitioner is

obligated to protect under these USPTO Rules of

Professional Conduct or other law.

Serious crime means:

(1) Any criminal offense classiﬁed as a felony

under the laws of the United States, any state or any

foreign country where the crime occurred; or

(2) Any crime a necessary element of which, as

determined by the statutory or common law

deﬁnition of such crime in the jurisdiction where

the crime occurred, includes interference with the

administration of justice, false swearing,

misrepresentation, fraud, willful failure to ﬁle

income tax returns, deceit, bribery, extortion,

misappropriation, theft, or an attempt or a conspiracy

or solicitation of another to commit a “serious

crime.”

Signiﬁcant evidence of rehabilitation means

satisfactory evidence that is signiﬁcantly more

probable than not that there will be no recurrence

in the foreseeable future of the practitioner’s prior

disability or addiction.

State means any of the 50 states of the United States

of America, the District of Columbia, and any

Commonwealth or territory of the United States of

America.

Substantial when used in reference to degree or

extent means a material matter of clear and weighty

importance.

Suspend or suspension means a temporary

debarring from practice before the Ofﬁce or other

jurisdiction.

Tribunal means the Ofﬁce, a court, an arbitrator in

a binding arbitration proceeding or a legislative

body, administrative agency or other body acting in

an adjudicative capacity. A legislative body,

administrative agency or other body acts in an

adjudicative capacity when a neutral ofﬁcial, after

the presentation of evidence or legal argument by a

party or parties, will render a binding legal judgment

directly affecting a party’s interests in a particular

matter.

United States means the United States of America,

and the territories and possessions the United States

of America.

USPTO Director means the Director of the United

States Patent and Trademark Ofﬁce, or an employee

of the Ofﬁce delegated authority to act for the

Director of the United States Patent and Trademark

Ofﬁce in matters arising under this part.

Writing or written means a tangible or electronic

record of a communication or representation,

including handwriting, typewriting, printing,

photostating, photography, audio or video recording

and electronic communications. A "signed" writing

includes an electronic sound, symbol or process

attached to or logically associated with a writing

and executed or adopted by a person with the intent

to sign the writing.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; revised, 73 FR 47650, Aug. 14, 2008,

effective Sept. 15, 2008; deﬁnition of “grievance” added,

77 FR 45247, July 31, 2012, effective August 30, 2012;

deﬁnitions of "mandatory disciplinary rule" and "matter"

removed, deﬁnitions of "fraud or fraudulent" and

"practitioner" revised, and deﬁnitions of "conﬁrmed in

writing," "ﬁrm or law ﬁrm," "informed consent,"

"law-related services," "partner," "person," "reasonable

belief or reasonably believes," "reasonably should know,"

"screened," "tribunal," and "writing or written" added,

78 FR 20180, Apr. 3, 2013, effective May 3, 2013;

deﬁnitions of "attorney or lawyer" and “practitioner"

revised, 81 FR 33591, May 27, 2016, effective June 27,

2016]

§ 11.2 Director of the Ofﬁce of Enrollment

and Discipline.

(a) Appointment. The USPTO Director shall

appoint a Director of the Ofﬁce of Enrollment and

January 2018R-313

§ 11.2CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Discipline (OED Director). In the event of a vacancy

in the ofﬁce of the OED Director, the USPTO

Director may designate an employee of the Ofﬁce

to serve as acting OED Director. The OED Director

shall be an active member in good standing of the

bar of the highest court of a State.

(b) Duties. The OED Director shall:

(1) Supervise staff as may be necessary for

the performance of the OED Director’s duties.

(2) Receive and act upon applications for

registration, prepare and grade the examination

provided for in § 11.7(b), maintain the register

provided for in § 11.5, and perform such other duties

in connection with enrollment and recognition of

attorneys and agents as may be necessary.

(3) Conduct investigations into the moral

character and reputation of any individual seeking

to be registered as an attorney or agent, or of any

individual seeking limited recognition, deny

registration or recognition of individuals failing to

demonstrate possession of good moral character and

reputation, and perform such other duties in

connection with enrollment matters and

investigations as may be necessary.

(4) Conduct investigations of matters

involving possible grounds for discipline of

practitioners coming to the attention of the OED

Director. Except in matters meriting summary

dismissal, no disposition under § 11.22(h) shall be

recommended or undertaken by the OED Director

until the accused practitioner shall have been

afforded an opportunity to respond to a reasonable

inquiry by the OED Director.

(5) With the consent of a panel of three

members of the Committee on Discipline, initiate

disciplinary proceedings under § 11.32 and perform

such other duties in connection with investigations

and disciplinary proceedings as may be necessary.

(6) Oversee the preliminary screening of

information and close investigations as provided for

in § 11.22.

(7) [Reserved]

enrollment or recognition. Any petition from any

action or requirement of the staff of OED reporting

to the OED Director shall be taken to the OED

Director accompanied by payment of the fee set

forth in § 1.21(a)(5)(i) of this chapter. Any such

petition not ﬁled within sixty days from the mailing

date of the action or notice from which relief is

requested will be dismissed as untimely. The ﬁling

of a petition will neither stay the period for taking

other action which may be running, nor stay other

proceedings. The petitioner may ﬁle a single request

for reconsideration of a decision within thirty days

of the date of the decision. Filing a request for

reconsideration stays the period for seeking review

of the OED Director’s decision until a ﬁnal decision

on the request for reconsideration is issued.

(d) Review of OED Director’s decision

regarding enrollment or recognition. A party

dissatisﬁed with a ﬁnal decision of the OED

Director regarding enrollment or recognition shall

seek review of the decision upon petition to the

USPTO Director accompanied by payment of the

fee set forth in§ 1.21(a)(5)(ii) of this chapter. By

ﬁling such petition to the USPTO Director, the party

waives any right to seek reconsideration from the

OED Director. Any petition not ﬁled within thirty

days after the ﬁnal decision of the OED Director

may be dismissed as untimely. Briefs or memoranda,

if any, in support of the petition shall accompany

the petition. The petition will be decided on the basis

of the record made before the OED Director. The

USPTO Director in deciding the petition will

consider no new evidence. Copies of documents

already of record before the OED Director shall not

be submitted with the petition. An oral hearing will

not be granted except when considered necessary

by the USPTO Director. Any request for

reconsideration of the decision of the USPTO

Director may be dismissed as untimely if not ﬁled

within thirty days after the date of said decision.

Only a decision of the USPTO Director regarding

denial of a petition constitutes a ﬁnal decision for

the purpose of judicial review.

(e) Petition to USPTO Director in disciplinary

matters. A party dissatisﬁed with any action or

notice of any employee of the Ofﬁce of Enrollment

and Discipline during or at the conclusion of a

disciplinary investigation shall seek review of the

action or notice upon petition to the OED Director.

A petition from any action or notice of the staff

reporting to the OED Director shall be taken to the

OED Director. A party dissatisﬁed with the OED

Director’s ﬁnal decision shall seek review of the

ﬁnal decision upon petition to the USPTO Director

to invoke the supervisory authority of the USPTO

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.2

Director in appropriate circumstances in disciplinary

matters. Any petition under this paragraph must

contain a statement of the facts involved and the

point or points to be reviewed and the action

requested. Briefs or memoranda, if any, in support

of the petition must accompany the petition. Where

facts are to be proven, the proof in the form of

afﬁdavits or declarations (and exhibits, if any) must

accompany the petition. The OED Director may be

directed by the USPTO Director to ﬁle a reply to

the petition to the USPTO Director, supplying a

copy to the petitioner. An oral hearing on petition

taken to the USPTO Director will not be granted

except when considered necessary by the USPTO

Director. The ﬁling of a petition under this

paragraph will not stay an investigation, disciplinary

proceeding, or other proceedings. Any petition under

this part not ﬁled within thirty days of the mailing

date of the action or notice from which relief is

requested may be dismissed as untimely. Any

request for reconsideration of the decision of the

OED Director or the USPTO Director may be

dismissed as untimely if not ﬁled within thirty days

after the date of said decision. Only a decision of

the USPTO Director regarding denial of a petition

constitutes a ﬁnal decision for the purpose of judicial

review.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; paras. (a), (b)(4), (c) and (d) revised, paras.

(b)(5), (b)(6) and (e) added, 73 FR 47650, Aug. 14, 2008,

effective Sept. 15, 2008; paras. (c), (d) and (e) revised,

78 FR 20180, Apr. 3, 2013, effective May 3, 2013]

§ 11.3 Suspension of rules.

(a) In an extraordinary situation, when justice

requires, any requirement of the regulations of this

Part which is not a requirement of statute may be

suspended or waived by the USPTO Director or the

designee of the USPTO Director, sua sponte, or on

petition by any party, including the OED Director

or the OED Director’s representative, subject to

such other requirements as may be imposed.

(b) No petition under this section shall stay a

disciplinary proceeding unless ordered by the

USPTO Director or a hearing ofﬁcer.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; revised, 73 FR 47650, Aug. 14, 2008,

effective Sept. 15, 2008]

Subpart B — Recognition To Practice Before

the USPTO

PATENTS, TRADEMARKS, AND OTHER

NON-PATENT LAW

§ 11.4 [Reserved]

[Reserved, 69 FR 35427, June 24, 2004, effective

July 26, 2004]

§ 11.5 Register of attorneys and agents in

patent matters; practice before the ofﬁce.

(a) A register of attorneys and agents is kept in

the Ofﬁce on which are entered the names of all

individuals recognized as entitled to represent

applicants having prospective or immediate business

before the Ofﬁce in the preparation and prosecution

of patent applications. Registration in the Ofﬁce

under the provisions of this part shall entitle the

individuals so registered to practice before the Ofﬁce

only in patent matters.

(b) Practice before the Ofﬁce. Practice before

the Ofﬁce includes, but is not limited to, law-related

service that comprehends any matter connected with

the presentation to the Ofﬁce or any of its ofﬁcers

or employees relating to a client’s rights, privileges,

duties, or responsibilities under the laws or

regulations administered by the Ofﬁce for the grant

of a patent or registration of a trademark, or for

enrollment or disciplinary matters. Such

presentations include preparing necessary documents

in contemplation of ﬁling the documents with the

Ofﬁce, corresponding and communicating with the

Ofﬁce, and representing a client through documents

or at interviews, hearings, and meetings, as well as

communicating with and advising a client

concerning matters pending or contemplated to be

presented before the Ofﬁce. Nothing in this section

proscribes a practitioner from employing or retaining

non-practitioner assistants under the supervision of

the practitioner to assist the practitioner in matters

pending or contemplated to be presented before the

Ofﬁce.

(1) Practice before the Ofﬁce in patent

matters. Practice before the Ofﬁce in patent matters

includes, but is not limited to, preparing and

prosecuting any patent application, consulting with

January 2018R-315

§ 11.5CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

or giving advice to a client in contemplation of ﬁling

a patent application or other document with the

Ofﬁce, drafting the speciﬁcation or claims of a

patent application; drafting an amendment or reply

to a communication from the Ofﬁce that may require

written argument to establish the patentability of a

claimed invention; drafting a reply to a

communication from the Ofﬁce regarding a patent

application; and drafting a communication for a

public use, interference, reexamination proceeding,

petition, appeal to or any other proceeding before

the Patent Trial and Appeal Board, or other

proceeding. Registration to practice before the

Ofﬁce in patent cases sanctions the performance of

those services which are reasonably necessary and

incident to the preparation and prosecution of patent

applications or other proceeding before the Ofﬁce

involving a patent application or patent in which the

practitioner is authorized to participate. The services

include:

(i) Considering the advisability of relying

upon alternative forms of protection which may be

available under state law, and

(ii) Drafting an assignment or causing an

assignment to be executed for the patent owner in

contemplation of ﬁling or prosecution of a patent

application for the patent owner, where the

practitioner represents the patent owner after a patent

issues in a proceeding before the Ofﬁce, and when

drafting the assignment the practitioner does no

more than replicate the terms of a previously

existing oral or written obligation of assignment

from one person or party to another person or party.

(2) Practice before the Ofﬁce in trademark

matters. Practice before the Ofﬁce in trademark

matters includes, but is not limited to, consulting

with or giving advice to a client in contemplation

of ﬁling a trademark application or other document

with the Ofﬁce; preparing and prosecuting an

application for trademark registration; preparing an

amendment which may require written argument to

establish the registrability of the mark; and

conducting an opposition, cancellation, or concurrent

use proceeding; or conducting an appeal to the

Trademark Trial and Appeal Board.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; revised, 73 FR 47650, Aug. 14, 2008,

effective Sept. 15, 2008; para. (b)(1) introductory text

revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16,

2012]

§ 11.6 Registration of attorneys and agents.

(a) Attorneys. Any citizen of the United States

who is an attorney and who fulﬁlls the requirements

of this part may be registered as a patent attorney

to practice before the Ofﬁce. When appropriate, any

alien who is an attorney, who lawfully resides in the

United States, and who fulﬁlls the requirements of

this part may be registered as a patent attorney to

practice before the Ofﬁce, provided that such

registration is not inconsistent with the terms upon

which the alien was admitted to, and resides in, the

United States and further provided that the alien

may remain registered only:

(1) If the alien continues to lawfully reside

in the United States and registration does not

become inconsistent with the terms upon which the

alien continues to lawfully reside in the United

States, or

(2) If the alien ceases to reside in the United

States, the alien is qualiﬁed to be registered under

paragraph (c) of this section. See also § 11.9(b).

(b) Agents. Any citizen of the United States

who is not an attorney, and who fulﬁlls the

requirements of this part may be registered as a

patent agent to practice before the Ofﬁce. When

appropriate, any alien who is not an attorney, who

lawfully resides in the United States, and who fulﬁlls

the requirements of this part may be registered as a

patent agent to practice before the Ofﬁce, provided

that such registration is not inconsistent with the

terms upon which the alien was admitted to, and

resides in, the United States, and further provided

that the alien may remain registered only:

(1) If the alien continues to lawfully reside

in the United States and registration does not

become inconsistent with the terms upon which the

alien continues to lawfully reside in the United

States or

(2) If the alien ceases to reside in the United

States, the alien is qualiﬁed to be registered under

paragraph (c) of this section. See also § 11.9(b).

the United States who shall ﬁle proof to the

satisfaction of the OED Director that he or she is

registered and in good standing before the patent

ofﬁce of the country in which he or she resides and

practices, and who is possessed of the qualiﬁcations

R-316January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.6

stated in § 11.7, may be registered as a patent agent

to practice before the Ofﬁce for the limited purpose

of presenting and prosecuting patent applications

of applicants located in such country, provided that

the patent ofﬁce of such country allows substantially

reciprocal privileges to those admitted to practice

before the Ofﬁce. Registration as a patent agent

under this paragraph shall continue only during the

period that the conditions speciﬁed in this paragraph

obtain. Upon notice by the patent ofﬁce of such

country that a patent agent registered under this

section is no longer registered or no longer in good

standing before the patent ofﬁce of such country,

and absent a showing of cause why his or her name

should not be removed from the register, the OED

Director shall promptly remove the name of the

patent agent from the register and publish the fact

of removal. Upon ceasing to reside in such country,

the patent agent registered under this section is no

longer qualiﬁed to be registered under this section,

and the OED Director shall promptly remove the

name of the patent agent from the register and

publish the fact of removal.

(d) Patent Trial and Appeal Board matters. For

action by a person who is not registered in a

proceeding before the Patent Trial and Appeal

Board, see § 41.5(a) or § 42.10(c) of this title.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; para. (d) revised, 69 FR 49959, Aug. 12,

2004, effective Sept. 13, 2004; para. (d) revised, 77 FR

46615, Aug. 6, 2012, effective Sept. 16, 2012]

§ 11.7 Requirements for registration.

(a) No individual will be registered to practice

before the Ofﬁce unless he or she has:

(1) Applied to the USPTO Director in

writing by completing an application for registration

form supplied by the OED Director and furnishing

all requested information and material; and

(2) Established to the satisfaction of the

OED Director that he or she:

(i) Possesses good moral character and

reputation;

(ii) Possesses the legal, scientiﬁc, and

technical qualiﬁcations necessary for him or her to

render applicants valuable service; and

(iii) Is competent to advise and assist

patent applicants in the presentation and prosecution

of their applications before the Ofﬁce.

(b)(1) To enable the OED Director to

determine whether an individual has the

qualiﬁcations speciﬁed in paragraph (a)(2) of this

section, the individual shall:

(i) File a complete application for

registration each time admission to the registration

examination is requested. A complete application

for registration includes:

(A) An application for registration

form supplied by the OED Director wherein all

requested information and supporting documents

are furnished,

(B) Payment of the fees required by

§ 1.21(a)(1) of this subchapter,

and technical qualiﬁcations, and

(D) For aliens, provide proof that

recognition is not inconsistent with the terms of their

visa or entry into the United States;

(ii) Pass the registration examination,

unless the taking and passing of the examination is

waived as provided in paragraph (d) of this section.

Unless examination is waived pursuant to paragraph

(d) of this section, each individual seeking

registration must take and pass the registration

examination to enable the OED Director to

determine whether the individual possesses the legal

and competence qualiﬁcations speciﬁed in

paragraphs (a)(2)(ii) and (a)(2)(iii) of this section.

An individual failing the examination may, upon

receipt of notice of failure from OED, reapply for

admission to the examination. An individual failing

the examination must wait thirty days after the date

the individual last took the examination before

retaking the examination. An individual reapplying

shall:

(A) File a completed application for

registration form wherein all requested information

and supporting documents are furnished,

(B) Pay the fees required by §

1.21(a)(1) of this subchapter, and

recognition is not inconsistent with the terms of their

visa or entry into the United States; and

January 2018R-317

§ 11.7CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(iii) Provide satisfactory proof of

possession of good moral character and reputation.

(2) An individual failing to ﬁle a complete

application for registration will not be admitted to

the examination and will be notiﬁed of the

incompleteness. Applications for registration that

are incomplete as originally submitted will be

considered only when they have been completed

and received by OED, provided that this occurs

within sixty days of the mailing date of the notice

of incompleteness. Thereafter, a new and complete

application for registration must be ﬁled. Only an

individual approved as satisfying the requirements

of paragraphs (b)(1)(i)(A), (b)(1)(i)(B), (b)(1)(i)(C)

and (b)(1)(i)(D) of this sect i on may be admitted to

the examination.

(3) If an individual does not reapply until

more than one year after the mailing date of a notice

of failure, that individual must again comply with

paragraph (b)(1)(i) of this section.

responsible for updating all information and answers

submitted in or with the application for registration

based upon anything occurring between the date the

application for registration is signed by the

individual, and the date he or she is registered or

recognized to practice before the Ofﬁce in patent

matters. The update shall be ﬁled within thirty days

after the date of the occasion that necessitates the

update.

(d) Waiver of the Registration Examination for

Former Ofﬁce Employees.

(1) Former patent examiners who by July

26, 2004, had not actively served four years in the

patent examining corps, and were serving in the

corps at the time of their separation. The OED

Director may waive the taking of a registration

examination in the case of any individual meeting

the requirements of paragraph (b)(1)(i)(C) of this

section who is a former patent examiner but by July

26, 2004, had not served four years in the patent

examining corps, if the individual demonstrates that

he or she:

(i) Actively served in the patent

examining corps of the Ofﬁce and was serving in

the corps at the time of separation from the Ofﬁce;

(ii) Received a certiﬁcate of legal

competency and negotiation authority;

(iii) After receiving the certiﬁcate of

legal competency and negotiation authority, was

rated at least fully successful in each quality

performance element of his or her performance plan

for the last two complete ﬁscal years as a patent

examiner; and

(iv) Was not under an oral or written

warning regarding the quality performance elements

at the time of separation from the patent examining

corps.

(2) Former patent examiners who on July

26, 2004, had actively served four years in the patent

examining corps, and were serving in the corps at

the time of their separation. The OED Director may

waive the taking of a registration examination in the

case of any individual meeting the requirements of

paragraph (b)(1)(i)(C) of this section who is a former

patent examiner and by July 26, 2004, had served

four years in the patent examining corps, if the

individual demonstrates that he or she:

(i) Actively served for at least four years

in the patent examining corps of the Ofﬁce by July

26, 2004, and was serving in the corps at the time

of separation from the Ofﬁce;

(ii) Was rated at least fully successful in

each quality performance element of his or her

performance plan for the last two complete ﬁscal

years as a patent examiner in the Ofﬁce; and

(iii) Was not under an oral or written

warning regarding the quality performance elements

at the time of separation from the patent examining

corps.

(3) Certain former Ofﬁce employees who

were not serving in the patent examining corps upon

their separation from the Ofﬁce. The OED Director

may waive the taking of a registration examination

in the case of a former Ofﬁce employee meeting the

requirements of paragraph (b)(1)(i)(C) of this section

who by petition demonstrates possession of the

necessary legal qualiﬁcations to render to patent

applicants and others valuable service and assistance

in the preparation and prosecution of their

applications or other business before the Ofﬁce by

showing that he or she has:

(i) Exhibited comprehensive knowledge

of patent law equivalent to that shown by passing

the registration examination as a result of having

R-318January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.7

been in a position of responsibility in the Ofﬁce in

which he or she:

(A) Provided substantial guidance on

patent examination policy, including the

development of rule or procedure changes, patent

examination guidelines, changes to the Manual of

Patent Examining Procedure, development of

training or testing materials for the patent examining

corps, or development of materials for the

registration examination or continuing legal

education; or

(B) Represented the Ofﬁce in patent

cases before Federal courts; and

(ii) Was rated at least fully successful in

each quality performance element of his or her

performance plan for said position for the last two

complete rating periods in the Ofﬁce, and was not

under an oral or written warning regarding such

performance elements at the time of separation from

the Ofﬁce.

(4) To be eligible for consideration for

waiver, an individual formerly employed by the

Ofﬁce within the scope of one of paragraphs (d)(1),

(d)(2) or (d)(3) of this section must ﬁle a complete

application for registration and pay the fee required

by § 1.21(a)(1)(i) of this subchapter within two years

of the individual’s date of separation from the

Ofﬁce. All other individuals formerly employed by

the Ofﬁce, including former examiners, ﬁling an

application for registration or fee more than two

years after separation from the Ofﬁce, are required

to take and pass the registration examination. The

individual or former examiner must pay the

examination fee required by § 1.21(a)(1)(ii) of this

subchapter within thirty days after notice of

non-waiver.

(e) Examination results. Notiﬁcation of the

examination results is ﬁnal. Within sixty days of

the mailing date of a notice of failure, the individual

is entitled to inspect, but not copy, the questions and

answers he or she incorrectly answered. Review will

be under supervision. No notes may be taken during

such review. Substantive review of the answers or

questions may not be pursued by petition for

regrade. An individual who failed the examination

has the right to retake the examination an unlimited

number of times upon payment of the fees required

by § 1.21(a)(1)(i) and (ii) of this subchapter, and a

fee charged by a commercial entity administering

the examination.

(f) Application for reciprocal recognition. An

individual seeking reciprocal recognition under §

11.6(c), in addition to satisfying the provisions of

paragraphs (a) and (b) of this section, and the

provisions of § 11.8(c), shall pay the application fee

required by § 1.21(a)(1)(i) of this subchapter upon

ﬁling an application for registration.

(g) Investigation of good moral character and

reputation. (1) Every individual seeking recognition

shall answer all questions in the application for

registration and request(s) for comments issued by

OED; disclose all relevant facts, dates and

information; and provide veriﬁed copies of

documents relevant to his or her good moral

character and reputation. An individual who is an

attorney shall submit a certiﬁed copy of each of his

or her State bar applications and moral character

determinations, if available.

(2)(i) If the OED Director receives

information from any source that reﬂects adversely

on the good moral character or reputation of an

individual seeking registration or recognition, the

OED Director shall conduct an investigation into

the good moral character and reputation of that

individual. The investigation will be conducted after

the individual has passed the registration

examination, or after the registration examination

has been waived for the individual, as applicable.

An individual failing to timely answer questions or

respond to an inquiry by OED shall be deemed to

have withdrawn his or her application, and shall be

required to reapply, pass the examination, and

otherwise satisfy all the requirements of this section.

No individual shall be certiﬁed for registration or

recognition by the OED Director until, to the

satisfaction of the OED Director, the individual

demonstrates his or her possession of good moral

character and reputation.

(ii) The OED Director, in considering an

application for registration by an attorney, may

accept a State bar’s character determination as

meeting the requirements set forth in paragraph (g)

of this section if, after review, the Ofﬁce ﬁnds no

substantial discrepancy between the information

provided with his or her application for registration

and the State bar application and moral character

determination, provided that acceptance is not

January 2018R-319

§ 11.7CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

inconsistent with other rules and the requirements

of 35 U.S.C. 2(b)(2)(D).

(h) Good moral character and reputation.

Evidence showing lack of good moral character and

reputation may include, but is not limited to,

conviction of a felony or a misdemeanor identiﬁed

in paragraph (h)(1) of this section, drug or alcohol

abuse; lack of candor; suspension or disbarment on

ethical grounds from a State bar; and resignation

from a State bar while under investigation.

(1) Conviction of felony or misdemeanor.

An individual who has been convicted of a felony

or a misdemeanor involving moral turpitude, breach

of trust, interference with the administration of

justice, false swearing, misrepresentation, fraud,

deceit, bribery, extortion, misappropriation, theft,

or conspiracy to commit any felony or misdemeanor,

is presumed not to be of good moral character and

reputation in the absence of a pardon or a

satisfactory showing of reform and rehabilitation,

and shall ﬁle with his or her application for

registration the fees required by § 1.21(a)(1)(ii) and

(a)(10) of this subchapter. The OED Director shall

determine whether individuals convicted of said

felony or misdemeanor provided satisfactory proof

of reform and rehabilitation.

(i) An individual who has been convicted

of a felony or a misdemeanor identiﬁed in paragraph

(h)(1) of this section shall not be eligible to apply

for registration during the time of any sentence

(including conﬁnement or commitment to

imprisonment), deferred adjudication, and period

of probation or parole as a result of the conviction,

and for a period of two years after the date of

completion of the sentence, deferred adjudication,

and period of probation or parole, whichever is later.

(ii) The following presumptions apply to

the determination of good moral character and

reputation of an individual convicted of said felony

or misdemeanor:

(A) The court record or docket entry

of conviction is conclusive evidence of guilt in the

absence of a pardon or a satisfactory showing of

reform or rehabilitation; and

(B) An individual convicted of a

felony or any misdemeanor identiﬁed in paragraph

(h)(1) of this section is conclusively deemed not to

have good moral character and reputation, and shall

not be eligible to apply for registration for a period

of two years after completion of the sentence,

deferred adjudication, and period of probation or

parole, whichever is later.

(iii) The individual, upon applying for

registration, shall provide satisfactory evidence that

he or she is of good moral character and reputation.

(iv) Upon proof that a conviction has

been set aside or reversed, the individual shall be

eligible to ﬁle a complete application for registration

and the fee required by § 1.21(a)(1)(ii) of this

subchapter and, upon passing the registration

examination, have the OED Director determine, in

accordance with paragraph (h)(1) of this section,

whether, absent the conviction, the individual

possesses good moral character and reputation.

(2) Good moral character and reputation

involving drug or alcohol abuse. An individual’s

record is reviewed as a whole to see if there is a

drug or alcohol abuse issue. An individual appearing

to abuse drugs or alcohol may be asked to undergo

an evaluation, at the individual’s expense, by a

qualiﬁed professional approved by the OED

Director. In instances where, before an investigation

commences, there is evidence of a present abuse or

an individual has not established a record of

recovery, the OED Director may request the

individual to withdraw his or her application, and

require the individual to satisfactorily demonstrate

that he or she is complying with treatment and

undergoing recovery.

(3) Moral character and reputation

involving lack of candor. An individual’s lack of

candor in disclosing facts bearing on or relevant to

issues concerning good moral character and

reputation when completing the application or any

time thereafter may be found to be cause to deny

registration on moral character and reputation

grounds.

(4) Moral character and reputation

involving suspension, disbarment, or resignation

from a profession.

(i) An individual who has been disbarred

or suspended from practice of law or other

profession, or has resigned in lieu of a disciplinary

proceeding (excluded or disbarred on consent) shall

be ineligible to apply for registration as follows:

(A) An individual who has been

disbarred from practice of law or other profession,

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.7

or has resigned in lieu of a disciplinary proceeding

(excluded or disbarred on consent) shall be ineligible

to apply for registration for a period of ﬁve years

from the date of disbarment or resignation.

(B) An individual who has been

suspended on ethical grounds from the practice of

law or other profession shall be ineligible to apply

for registration until expiration of the period of

suspension.

disbarred, suspended or resigned in lieu of a

disciplinary proceeding, but also convicted in a court

of a felony, or of a crime involving moral turpitude

or breach of trust, shall be ineligible to apply for

registration until the conditions in paragraphs (h)(1)

and (h)(4) of this section are fully satisﬁed.

(ii) An individual who has been disbarred

or suspended, or who resigned in lieu of a

disciplinary proceeding shall ﬁle an application for

registration and the fees required by § 1.21(a)(1)(ii)

and (a)(10) of this subchapter; provide a full and

complete copy of the proceedings that led to the

disbarment, suspension, or resignation; and provide

satisfactory proof that he or she possesses good

moral character and reputation. The following

presumptions shall govern the determination of good

moral character and reputation of an individual who

has been licensed to practice law or other profession

in any jurisdiction and has been disbarred,

suspended on ethical grounds, or allowed to resign

in lieu of discipline, in that jurisdiction.

(A) A copy of the record resulting in

disbarment, suspension or resignation is prima facie

evidence of the matters contained in the record, and

the imposition of disbarment or suspension, or the

acceptance of the resignation of the individual shall

be deemed conclusive that the individual has

committed professional misconduct.

(B) The individual is ineligible for

registration and is deemed not to have good moral

character and reputation during the period of the

imposed discipline.

(iii) The only defenses available with

regard to an underlying disciplinary matter resulting

in disbarment, suspension on ethical grounds, or

resignation in lieu of a disciplinary proceeding are

set out below, and must be shown to the satisfaction

of the OED Director:

(A) The procedure in the disciplinary

court was so lacking in notice or opportunity to be

heard as to constitute a deprivation of due process;

(B) There was such inﬁrmity of proof

establishing the misconduct as to give rise to the

clear conviction that the Ofﬁce could not,

consistently with its duty, accept as ﬁnal the

conclusion on that subject; or

character and reputation by the Ofﬁce would result

in grave injustice.

(i) Factors that may be taken into

consideration when evaluating rehabilitation of an

individual seeking a moral character and reputation

determination. The factors enumerated below are

guidelines to assist the OED Director in determining

whether an individual has demonstrated

rehabilitation from an act of misconduct or moral

turpitude. The factors include:

(1) The nature of the act of misconduct,

including whether it involved moral turpitude,

whether there were aggravating or mitigating

circumstances, and whether the activity was an

isolated event or part of a pattern;

(2) The age and education of the

individual at the time of the misconduct and the age

and education of the individual at the present time;

(3) The length of time that has passed

between the misconduct and the present, absent any

involvement in any further acts of moral turpitude,

the amount of time and the extent of rehabilitation

being dependent upon the nature and seriousness of

the act of misconduct under consideration;

(4) Restitution by the individual to any

person who suffered monetary losses through acts

or omissions of the individual;

(5) Expungement of a conviction;

(6) Successful completion or early

discharge from probation or parole;

(7) Abstinence from the use of controlled

substances or alcohol for not less than two years if

the speciﬁc misconduct was attributable in part to

the use of a controlled substance or alcohol, where

abstinence may be demonstrated by, but is not

necessarily limited to, enrolling in and complying

with a self-help or professional treatment program;

January 2018R-321

§ 11.7CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(8) If the speciﬁc misconduct was

attributable in part to a medically recognized mental

disease, disorder or illness, proof that the individual

sought professional assistance, and complied with

the treatment program prescribed by the

professional, and submitted letters from the treating

psychiatrist/psychologist verifying that the medically

recognized mental disease, disorder or illness will

not impede the individual’s ability to competently

practice before the Ofﬁce;

(9) Payment of the ﬁne imposed in

connection with any criminal conviction;

(10) Correction of behavior responsible

in some degree for the misconduct;

(11) Signiﬁcant and conscientious

involvement in programs designed to provide social

beneﬁts or to ameliorate social problems; and

(12) Change in attitude from that which

existed at the time of the act of misconduct in

question as evidenced by any or all of the following:

(i) Statements of the individual;

(ii) Statements from persons familiar

with the individual’s previous misconduct and with

subsequent attitudes and behavioral patterns;

(iii) Statements from probation or

parole ofﬁcers or law enforcement ofﬁcials as to

the individual’s social adjustments; and

(iv) Statements from persons

competent to testify with regard to neuropsychiatry

or emotional disturbances.

(j) Notice to Show Cause. The OED Director

shall inquire into the good moral character and

reputation of an individual seeking registration,

providing the individual with the opportunity to

create a record on which a decision is made. If,

following inquiry and consideration of the record,

the OED Director is of the opinion that the

individual seeking registration has not satisfactorily

established that he or she possesses good moral

character and reputation, the OED Director shall

issue to the individual a notice to show cause why

the individual’s application for registration should

not be denied.

(1) The individual shall be given no less than

ten days from the date of the notice to reply. The

notice shall be given by certiﬁed mail at the address

appearing on the application if the address is in the

United States, and by any other reasonable means

if the address is outside the United States.

(2) Following receipt of the individual’s

response, or in the absence of a response, the OED

Director shall consider the individual’s response, if

any, and the record, and determine whether, in the

OED Director’s opinion, the individual has sustained

his or her burden of satisfactorily demonstrating that

he or she possesses good moral character and

reputation.

(k) Reapplication for registration. An

individual who has been refused registration for lack

of good moral character or reputation may reapply

for registration two years after the date of the

decision, unless a shorter period is otherwise ordered

by the USPTO Director. An individual, who has

been notiﬁed that he or she is under investigation

for good moral character and reputation may elect

to withdraw his or her application for registration,

and may reapply for registration two years after the

date of withdrawal. Upon reapplication for

registration, the individual shall pay the fees

required by § 1.21(a)(1)(ii) and (a)(10) of this

subchapter, and has the burden of showing to the

satisfaction of the OED Director his or her

possession of good moral character and reputation

as prescribed in paragraph (b) of this section. Upon

reapplication for registration, the individual also

shall complete successfully the examination

prescribed in paragraph (b) of this section, even

though the individual has previously passed a

registration examination.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004]

§ 11.8 Oath and registration fee.

(a) After an individual passes the examination,

or the examination is waived, the OED Director

shall promptly publish a solicitation for information

concerning the individual’s good moral character

and reputation. The solicitation shall include the

individual’s name, and business or communication

postal address.

(b) An individual shall not be registered as an

attorney under § 11.6(a), registered as an agent

under § 11.6(b) or (c), or granted limited recognition

under § 11.9(b) unless within two years of the

mailing date of a notice of passing registration

examination or of waiver of the examination the

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.8

individual ﬁles with the OED Director a completed

Data Sheet, an oath or declaration prescribed by the

USPTO Director, and the registration fee set forth

in § 1.21(a)(2) of this subchapter. An individual

seeking registration as an attorney under § 11.6(a)

must provide a certiﬁcate of good standing of the

bar of the highest court of a State that is no more

than six months old.

requirements of paragraph (b) of this section within

the two-year period will be required to retake the

registration examination.

(d) [Reserved]

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; para. (d) added, 73 FR 67750, Nov. 17,

2008, effective Dec. 17, 2008; para. (d) removed and

reserved, 78 FR 20180, Apr. 3, 2013, effective May 3,

2013]

§ 11.9 Limited recognition in patent matters.

(a) Any individual not registered under § 11.6

may, upon a showing of circumstances which render

it necessary or justiﬁable, and that the individual is

of good moral character and reputation, be given

limited recognition by the OED Director to

prosecute as attorney or agent a speciﬁed patent

application or speciﬁed patent applications. Limited

recognition under this paragraph shall not extend

further than the application or applications speciﬁed.

Limited recognition shall not be granted while

individuals who have passed the examination or for

whom the examination has been waived are awaiting

registration to practice before the Ofﬁce in patent

matters.

(b) A nonimmigrant alien residing in the United

States and fulﬁlling the provisions of § 11.7(a) and

(b) may be granted limited recognition if the

nonimmigrant alien is authorized by the United

States Government to be employed or trained in the

United States in the capacity of representing a patent

applicant by presenting or prosecuting a patent

application. Limited recognition shall be granted

for a period consistent with the terms of authorized

employment or training. Limited recognition shall

not be granted or extended to a non-United States

citizen residing abroad. If granted, limited

recognition shall automatically expire upon the

nonimmigrant alien’s departure from the United

States.

may, if appointed by an applicant, prosecute an

international patent application only before the

United States International Searching Authority and

the United States International Preliminary

Examining Authority, provided that the individual

has the right to practice before the national ofﬁce

with which the international application is ﬁled as

provided in PCT Art. 49, Rule 90 and § 1.455 of

this subchapter, or before the International Bureau

when the USPTO is acting as Receiving Ofﬁce

pursuant to PCT Rules 83.1 bis and 90.1.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; para. (b) revised, 78 FR 20180, Apr. 3,

2013, effective May 3, 2013]

§ 11.10 Restrictions on practice in patent

matters.

(a) Only practitioners who are registered under

§ 11.6 or individuals given limited recognition under

§ 11.9(a) or (b) are permitted to prosecute patent

applications of others before the Ofﬁce; or represent

others in any proceedings before the Ofﬁce.

(b) Post employment agreement of former

Ofﬁce employee. No individual who has served in

the patent examining corps or elsewhere in the

Ofﬁce may practice before the Ofﬁce after

termination of his or her service, unless he or she

signs a written undertaking agreeing:

(1) To not knowingly act as agent or attorney

for, or otherwise represent, or assist in any manner

the representation of, any other person:

(i) Before the Ofﬁce,

(ii) In connection with any particular

patent or patent application,

(iii) In which said employee participated

personally and substantially as an employee of the

Ofﬁce; and

(2) To not knowingly act within two years

after terminating employment by the Ofﬁce as agent

or attorney for, or otherwise represent, or assist in

any manner the representation of any other person:

(i) Before the Ofﬁce,

(ii) In connection with any particular

patent or patent application,

January 2018R-323

§ 11.10CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(iii) If such patent or patent application

was pending under the employee’s ofﬁcial

responsibility as an ofﬁcer or employee within a

period of one year prior to the termination of such

responsibility.

(3) The words and phrases in paragraphs

(b)(1) and (b)(2) of this section are construed as

follows:

(i) Represent and representation mean

acting as patent attorney or patent agent or other

representative in any appearance before the Ofﬁce,

or communicating with an employee of the Ofﬁce

with intent to inﬂuence.

(ii) Assist in any manner means aid or

help another person on a particular patent or patent

application involving representation.

(iii) Particular patent or patent

application means any patent or patent application,

including, but not limited to, a provisional,

substitute, international, international design,

continuation, divisional, continuation-in-part, or

reissue patent application, as well as any protest,

reexamination, petition, appeal, interference, or trial

proceeding based on the patent or patent application.

(iv) Participate personally and

substantially. (A) Basic requirements. The

restrictions of § 11.10(a)(1) apply only to those

patents and patent applications in which a former

Ofﬁce employee had “personal and substantial

participation,” exercised “through decision,

approval, disapproval, recommendation, the

rendering of advice, investigation or otherwise.” To

participate personally means directly, and includes

the participation of a subordinate when actually

directed by the former Ofﬁce employee in the patent

or patent application. Substantially means that the

employee’s involvement must be of signiﬁcance to

the matter, or form a basis for a reasonable

appearance of such signiﬁcance. It requires more

than ofﬁcial responsibility, knowledge, perfunctory

involvement, or involvement on an administrative

or peripheral issue. A ﬁnding of substantiality

should be based not only on the effort devoted to a

patent or patent application, but also on the

importance of the effort. While a series of peripheral

involvements may be insubstantial, the single act

of approving or participation in a critical step may

be substantial. It is essential that the participation

be related to a “particular patent or patent

application.” (See paragraph (b)(3)(iii) of this

section.)

(B) Participation on ancillary matters.

An Ofﬁce employee’s participation on subjects not

directly involving the substantive merits of a patent

or patent application may not be “substantial,” even

if it is time-consuming. An employee whose ofﬁcial

responsibility is the review of a patent or patent

application solely for compliance with

administrative control or budgetary considerations

and who reviews a particular patent or patent

application for such a purpose should not be

regarded as having participated substantially in the

patent or patent application, except when such

considerations also are the subject of the employee’s

proposed representation.

determining substantial participation. Ofﬁcial

responsibility is deﬁned in paragraph (b)(3)(v) of

this section. “Personal and substantial participation”

is different from “ofﬁcial responsibility.” One’s

responsibility may, however, play a role in

determining the “substantiality” of an Ofﬁce

employee’s participation.

(v) Ofﬁcial responsibility means the

direct administrative or operating authority, whether

intermediate or ﬁnal, and either exercisable alone

or with others, and either personally or through

subordinates, to approve, disapprove, or otherwise

direct Government actions.

(A) Determining ofﬁcial

responsibility. Ordinarily, those areas assigned by

statute, regulation, Executive Order, job description,

or delegation of authority determine the scope of an

employee’s “ofﬁcial responsibility”. All particular

matters under consideration in the Ofﬁce are under

the “ofﬁcial responsibility” of the Director of the

Ofﬁce, and each is under that of any intermediate

supervisor having responsibility for an employee

who actually participates in the patent or patent

application within the scope of his or her duties. A

patent examiner would have “ofﬁcial responsibility”

for the patent applications assigned to him or her.

(B) Ancillary matters and ofﬁcial

responsibility. Administrative authority as used in

paragraph (v) of this section means authority for

planning, organizing and controlling a patent or

patent application rather than authority to review or

make decisions on ancillary aspects of a patent or

R-324January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.10

patent application such as the regularity of budgeting

procedures, public or community relations aspects,

or equal employment opportunity considerations.

Responsibility for such an ancillary consideration

does not constitute ofﬁcial responsibility for the

particular patent or patent application, except when

such a consideration is also the subject of the

employee’s proposed representation.

former employee, e.g., former patent examiner, to

be barred from representing or assisting in

representing another as to a particular patent or

patent application, he or she need not have known,

while employed by the Ofﬁce, that the patent or

patent application was pending under his or her

ofﬁcial responsibility. The former employee has a

reasonable duty of inquiry to learn whether the

patent or patent application had been under his or

her ofﬁcial responsibility. Ordinarily, a former

employee who is asked to represent another on a

patent or patent application will become aware of

facts sufﬁcient to suggest the relationship of the

prior matter to his or her former ofﬁce, e.g.,

technology center, group or art unit. If so, he or she

is under a duty to make further inquiry. It would be

prudent for an employee to maintain a record of

only patent application numbers of the applications

actually acted upon by decision or recommendation,

as well as those applications under the employee’s

ofﬁcial responsibility which he or she has not acted

upon.

(D) Self-disqualiﬁcation. A former

employee, e.g., former patent examiner, cannot

avoid the restrictions of this section through

self-disqualiﬁcation with respect to a patent or patent

application for which he or she otherwise had

ofﬁcial responsibility. However, an employee who

through self-disqualiﬁcation does not participate

personally and substantially in a particular patent

or patent application is not subject to the lifetime

restriction of paragraph (b)(1) of this section.

(vi) Pending means that the matter was

in fact referred to or under consideration by persons

within the employee’s area of ofﬁcial responsibility.

(4) Measurement of the two-year restriction

period. The two-year period under paragraph (b)(2)

of this section is measured from the date when the

employee’s ofﬁcial responsibility in a particular

area ends, not from the termination of service in the

Ofﬁce, unless the two occur simultaneously. The

prohibition applies to all particular patents or patent

applications subject to such ofﬁcial responsibility

in the one-year period before termination of such

responsibility.

section imposes restrictions generally parallel to

those imposed in 18 U.S.C. 207(a) and (b)(1). This

section, however, does not interpret these statutory

provisions or any other post-employment restrictions

that may apply to former Ofﬁce employees, and

such former employees should not assume that

conduct not prohibited by this section is otherwise

permissible. Former employees of the Ofﬁce,

whether or not they are practitioners, are encouraged

to contact the Department of Commerce for

information concerning applicable post-employment

restrictions.

(d) An employee of the Ofﬁce may not

prosecute or aid in any manner in the prosecution

of any patent application before the Ofﬁce.

(e) Practice before the Ofﬁce by Government

employees is subject to any applicable conﬂict of

interest laws, regulations or codes of professional

responsibility.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; para. (b)(3)(iii) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012; para. (b)(3)(iii)

revised, 80 FR 17918, Apr. 2, 2015, effective May 13,

2015]

§ 11.11 Administrative suspension,

inactivation, resignation, and readmission.

(a) Contact information.

(1) A registered practitioner must notify the

OED Director of his or her postal address for his or

her ofﬁce, up to three email addresses where he or

she receives email, and a business telephone number,

as well as every change to any of said addresses or

telephone number within thirty days of the date of

the change. A registered practitioner shall, in

addition to any notice of change of address and

telephone number ﬁled in individual patent

applications, separately ﬁle written notice of the

change of address or telephone number to the OED

Director. A registered practitioner who is an attorney

in good standing with the bar of the highest court

of one or more States shall provide the OED

January 2018R-325

§ 11.11CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Director with the State bar identiﬁcation number

associated with each membership. The OED

Director shall publish from the roster a list

containing the name, postal business addresses,

business telephone number, registration number,

and registration status as an attorney or agent of

each registered practitioner recognized to practice

before the Ofﬁce in patent cases.

(2) A letter may be addressed to any

registered practitioner, at the address of which

separate notice was last received by the OED

Director, for the purpose of ascertaining whether

such practitioner desires to remain on the register.

Any registered practitioner failing to reply and give

any information requested by the OED Director

within a time limit speciﬁed will be subject to

administrative suspension under paragraph (b) of

this section.

(b) Administrative suspension.

(1) Whenever it appears that a registered

practitioner or a person granted limited recognition

under § 11.9(b) has failed to comply with § 11.8(d)

or paragraph (a)(2) of this section, the OED Director

shall publish and send a notice to the registered

practitioner or person granted limited recognition

advising of the noncompliance, the consequence of

being administratively suspended under paragraph

(b)(5) of this section if noncompliance is not timely

remedied, and the requirements for reinstatement

under paragraph (f) of this section. The notice shall

be published and sent to the registered practitioner

or person granted limited recognition by mail to the

last postal address furnished under paragraph (a) of

this section or by email addressed to the last email

addresses furnished under paragraph (a) of this

section. The notice shall demand compliance and

payment of a delinquency fee set forth in §

1.21(a)(9)(i) of this subchapter within sixty days

after the date of such notice.

(2) In the event a registered practitioner or

person granted limited recognition fails to comply

with the notice of paragraph (b)(1) of this section

within the time allowed, the OED Director shall

publish and send in the manner provided for in

paragraph (b)(1) of this section to the registered

practitioner or person granted limited recognition a

Rule to Show Cause why his or her registration or

recognition should not be administratively

suspended, and he or she no longer be permitted to

practice before the Ofﬁce in patent matters or in any

way hold himself or herself out as being registered

or authorized to practice before the Ofﬁce in patent

matters. The OED Director shall ﬁle a copy of the

Rule to Show Cause with the USPTO Director.

(3) Within 30 days of the OED Director’s

sending the Rule to Show Cause identiﬁed in

paragraph (b)(2) of this section, the registered

practitioner or person granted limited recognition

may ﬁle a response to the Rule to Show Cause with

the USPTO Director. The response must set forth

the factual and legal bases why the person should

not be administratively suspended. The registered

practitioner or person granted limited recognition

shall serve the OED Director with a copy of the

response at the time it is ﬁled with the USPTO

Director. Within ten days of receiving a copy of the

response, the OED Director may ﬁle a reply with

the USPTO Director that includes documents

demonstrating that the notice identiﬁed in paragraph

(b)(1) of this section was published and sent to the

practitioner in accordance with paragraph (b)(1) of

this section. A copy of the reply by the OED

Director shall be served on the registered practitioner

or person granted limited recognition. When acting

on the Rule to Show Cause, if the USPTO Director

determines that there are no genuine issues of

material fact regarding the Ofﬁce’s compliance with

the notice requirements under this section or the

failure of the person to pay the requisite fees, the

USPTO Director shall enter an order

administratively suspending the registered

practitioner or person granted limited recognition.

Otherwise, the USPTO Director shall enter an

appropriate order dismissing the Rule to Show

Cause. Nothing herein shall permit an

administratively suspended registered practitioner

or person granted limited recognition to seek a stay

of the administrative suspension during the

pendency of any review of the USPTO Director’s

ﬁnal decision.

(4) [Reserved]

(5) An administratively suspended registered

practitioner or person granted limited recognition

is subject to investigation and discipline for his or

her conduct prior to, during, or after the period he

or she was administratively suspended.

(6) An administratively suspended registered

practitioner or person granted limited recognition

R-326January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.11

is prohibited from practicing before the Ofﬁce in

patent cases while administratively suspended. A

registered practitioner or person granted limited

recognition who knows he or she has been

administratively suspended under this section will

be subject to discipline for failing to comply with

the provisions of this paragraph (b).

(1) Any registered practitioner who shall

become employed by the Ofﬁce shall comply with

§ 11.116 for withdrawal from the applications,

patents, and trademark matters wherein he or she

represents an applicant or other person, and notify

the OED Director in writing of said employment on

the ﬁrst day of said employment. The name of any

registered practitioner employed by the Ofﬁce shall

be endorsed on the roster as administratively

inactive. Upon separation from the Ofﬁce, the

administratively inactive practitioner may request

reactivation by completing and ﬁling an application,

Data Sheet, signing a written undertaking required

by § 11.10, and paying the fee set forth in §

1.21(a)(1)(i) of this subchapter. An administratively

inactive practitioner remains subject to the

provisions of the USPTO Rules of Professional

Conduct and to proceedings and sanctions under §§

11.19 through 11.58 for conduct that violates a

provision of the USPTO Rules of Professional

Conduct prior to or during employment at the Ofﬁce.

If, within 30 days after separation from the Ofﬁce,

the registered practitioner does not request active

status or another status, the registered practitioner

will be endorsed on the roster as voluntarily inactive

and be subject to the provisions of paragraph (d) of

this section.

(2) Any registered practitioner who is a

judge of a court of record, full-time court

commissioner, U.S. bankruptcy judge, U.S.

magistrate judge, or a retired judge who is eligible

for temporary judicial assignment and is not engaged

in the practice of law may request, in writing, that

his or her name be endorsed on the roster as

administratively inactive. Upon acceptance of the

request, the OED Director shall endorse the name

of the practitioner as administratively inactive.

Following separation from the bench, the

practitioner may request restoration to active status

by completing and ﬁling an application, Data Sheet,

and signing a written undertaking required by§

11.10.

(d) Voluntary Inactivation.

(1) Except as provided in paragraph (d)(4)

of this section, any registered practitioner may

voluntarily enter inactive status by ﬁling a request,

in writing, that his or her name be endorsed on the

roster as voluntarily inactive. Upon acceptance of

the request, the OED Director shall endorse the

name as voluntarily inactive.

(2) [Reserved]

(3) A registered practitioner who seeks or

enters into voluntary inactive status is subject to

investigation and discipline for his or her conduct

prior to, during, or after the period of his or her

inactivation.

(4) [Reserved]

(5) A registered practitioner in voluntary

inactive status is prohibited from practicing before

the Ofﬁce in patent cases while in voluntary inactive

status. A registered practitioner in voluntary inactive

status will be subject to discipline for failing to

comply with the provisions of this paragraph. Upon

acceptance of the request for voluntary inactive

status, the practitioner must comply with the

provisions of § 11.116.

(6) Any registered practitioner whose name

has been endorsed as voluntarily inactive pursuant

to paragraph (d)(1) of this section and is not under

investigation and not subject to a disciplinary

proceeding may be restored to active status on the

practitioner ﬁles a written request for restoration, a

completed application for registration on a form

supplied by the OED Director furnishing all

requested information and material, including

information and material pertaining to the

practitioner’s moral character and reputation under

§ 11.7(a)(2)(i) during the period of inactivation, a

declaration or afﬁdavit attesting to the fact that the

practitioner has read the most recent revisions of

the patent laws and the rules of practice before the

Ofﬁce, and pays the fees set forth in § 1.21(a)(7)(iii)

and (iv) of this subchapter.

(e) Resignation. A registered practitioner or a

practitioner recognized under § 11.14(c), who is not

under investigation under § 11.22 for a possible

violation of the USPTO Rules of Professional

Conduct, subject to discipline under §§ 11.24 or

11.25, or a practitioner against whom probable cause

January 2018R-327

§ 11.11CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

has been found by a panel of the Committee on

Discipline under § 11.23(b), may resign by notifying

the OED Director in writing that he or she desires

to resign. Upon acceptance in writing by the OED

Director of such notice, that registered practitioner

or practitioner under § 11.14 shall no longer be

eligible to practice before the Ofﬁce in patent

matters but shall continue to ﬁle a change of address

for ﬁve years thereafter in order that he or she may

be located in the event information regarding the

practitioner’s conduct comes to the attention of the

OED Director or any grievance is made about his

or her conduct while he or she engaged in practice

before the Ofﬁce. The name of any registered

practitioner whose resignation is accepted shall be

removed from the register, endorsed as resigned,

and notice thereof published in the Ofﬁcial Gazette.

Upon acceptance of the resignation by the OED

Director, the registered practitioner must comply

with the provisions of § 11.116.

(f) Administrative reinstatement.

(1) Any registered practitioner who has been

administratively suspended pursuant to paragraph

(b) of this section, or who has resigned pursuant to

paragraph (e) of this section, may be reinstated on

the register provided the practitioner has applied for

reinstatement on an application form supplied by

the OED Director, demonstrated compliance with

the provisions of § 11.7(a)(2)(i) and (iii), and paid

the fees set forth in § 1.21(a)(9)(i) and (a)(9)(ii) of

this subchapter. Any person granted limited

recognition who has been administratively

suspended pursuant to paragraph (b) of this section

may have their recognition reactivated provided the

practitioner has applied for reinstatement on an

application form supplied by the OED Director,

demonstrated compliance with the provisions of §

11.7(a)(2)(i) and (iii), and paid the fees set forth in

§ 1.21(a)(9)(i) and (a)(9)(ii) of this subchapter. A

practitioner who has resigned or was

administratively suspended for two or more years

before the date the Ofﬁce receives a completed

application from the person who resigned or was

administratively suspended must also pass the

registration examination under § 11.7(b)(1)(ii). Any

reinstated practitioner is subject to investigation and

discipline for his or her conduct that occurred prior

to, during, or after the period of his or her

administrative suspension or resignation.

(2) Any registered practitioner whose

registration has been administratively inactivated

pursuant to paragraph (c) of this section may be

reinstated to the register as may be appropriate

provided within two years after his or her

employment with the Ofﬁce ceases or within two

years after his or her employment in a judicial

capacity ceases the following is ﬁled with the OED

Director: a request for reinstatement, a completed

application for registration on a form supplied by

the OED Director furnishing all requested

information and material, and the fee set forth in §

1.21(a)(9)(ii) of this subchapter. Any registered

practitioner inactivated or reinstated is subject to

investigation and discipline for his or her conduct

before, during, or after the period of his or her

inactivation.

[Added, 69 FR 35427, June 24, 2004, effective

July 26, 2004; revised, 73 FR 67750, Nov. 17, 2008,

effective Dec. 17, 2008; paras. (a), (b), and (c) revised,

paras. (d)(2) and (d)(4) removed and reserved, and paras.

(d)(5), (d)(6), (e) and (f)(1) revised, 78 FR 20180, Apr.

3, 2013, effective May 3, 2013]

§ 11.12 - 11.13 [Reserved]

§ 11.14 Individuals who may practice before

the Ofﬁce in trademark and other non-patent

matters.

(a) Attorneys. Any individual who is an attorney

as deﬁned in § 11.1 may represent others before the

Ofﬁce in trademark and other non-patent matters.

An attorney is not required to apply for registration

or recognition to practice before the Ofﬁce in

trademark and other non-patent matters. Registration

as a patent practitioner does not itself entitle an

individual to practice before the Ofﬁce in trademark

matters.

(b) Non-lawyers. Individuals who are not

attorneys are not recognized to practice before the

Ofﬁce in trademark and other non-patent matters,

except that individuals not attorneys who were

recognized to practice before the Ofﬁce in trademark

matters under this chapter prior to January 1, 1957,

will be recognized as agents to continue practice

before the Ofﬁce in trademark matters. Except as

provided in the preceding sentence, registration as

a patent agent does not itself entitle an individual

to practice before the Ofﬁce in trademark matters.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.12 - 11.13

not a resident of the United States who shall ﬁle a

written application for reciprocal recognition under

paragraph (f) of this section and prove to the

satisfaction of the OED Director that he or she is

registered or in good standing before the patent or

trademark ofﬁce of the country in which he or she

resides and practices and is possessed of good moral

character and reputation, may be recognized for the

limited purpose of representing parties located in

such country before the Ofﬁce in the presentation

and prosecution of trademark matters, provided: the

patent or trademark ofﬁce of such country allows

substantially reciprocal privileges to those permitted

to practice in trademark matters before the Ofﬁce.

Recognition under this paragraph shall continue

only during the period that the conditions speciﬁed

in this paragraph obtain.

(d) Recognition of any individual under this

section shall not be construed as sanctioning or

authorizing the performance of any act regarded in

the jurisdiction where performed as the unauthorized

practice of law.

(e) No individual other than those speciﬁed in

paragraphs (a), (b), and (c) of this section will be

permitted to practice before the Ofﬁce in trademark

matters on behalf of a client. Any individual may

appear in a trademark or other non-patent matter in

his or her own behalf. Any individual may appear

in a trademark matter for:

(1) A ﬁrm of which he or she is a member,

(2) A partnership of which he or she is a

partner, or

(3) A corporation or association of which he

or she is an ofﬁcer and which he or she is authorized

to represent, if such ﬁrm, partnership, corporation,

or association is a party to a trademark proceeding

pending before the Ofﬁce.

(f) Application for reciprocal recognition. An

individual seeking reciprocal recognition under

paragraph (c) of this section, in addition to providing

evidence satisfying the provisions of paragraph (c)

of this section, shall apply in writing to the OED

Director for reciprocal recognition, and shall pay

the application fee required by § 1.21(a)(1)(i) of this

subchapter.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.15 Refusal to recognize a practitioner.

Any practitioner authorized to appear before the

Ofﬁce may be suspended, excluded, or reprimanded

in accordance with the provisions of this Part. Any

practitioner who is suspended or excluded under

this Part shall not be entitled to practice before the

Ofﬁce in patent, trademark, or other non-patent

matters while suspended or excluded.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.16 Requirements for admission to the

USPTO Law School Clinic Certiﬁcation

Program.

(a) The USPTO Law School Clinic Certiﬁcation

Program allows students enrolled in a participating

law school’s clinic to practice before the Ofﬁce in

patent or trademark matters by drafting, ﬁling, and

prosecuting patent or trademark applications on a

pro bono basis for clients that qualify for assistance

from the law school’s clinic. All law schools

accredited by the American Bar Association are

eligible for participation in the program, and shall

be examined for acceptance using identical criteria.

(b) Application for admission and renewal—

(1) Application for admission.

Non-participating law schools seeking admission

to the USPTO Law School Clinic Certiﬁcation

Program, and participating law schools seeking to

add a practice area, shall submit an application for

admission for such practice area to OED in

accordance with criteria and time periods set forth

by the OED Director.

(2) Renewal application. Each participating

law school desiring to continue in the USPTO Law

School Clinic Certiﬁcation Program shall, biennially

from a date assigned to the law school by the OED

Director, submit a renewal application to OED in

accordance with criteria set forth by the OED

Director.

(3) The OED Director may refuse admission

or renewal of a law school to the USPTO Law

School Clinic Certiﬁcation Program if the OED

Director determines that admission, or renewal, of

the law school would fail to provide signiﬁcant

January 2018R-329

§ 11.16CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

beneﬁt to the public or the law students participating

in the law school’s clinic.

seeking admission to or participating in the USPTO

Law School Clinic Certiﬁcation Program must have

at least one Faculty Clinic Supervisor for the patent

practice area, if the clinic includes patent practice;

and at least one Faculty Clinic Supervisor for the

trademark practice area, if the clinic includes

trademark practice.

(1) Patent Faculty Clinic Supervisor. A

Faculty Clinic Supervisor for a law school clinic’s

patent practice must:

(i) Be a registered patent practitioner in

active status and good standing with OED;

(ii) Demonstrate at least 3 years

experience in prosecuting patent applications before

the Ofﬁce within the 5 years immediately prior to

the request for approval as a Faculty Clinic

Supervisor;

(iii) Assume full responsibility for the

instruction and guidance of law students

participating in the law school clinic’s patent

practice;

(iv) Assume full responsibility for all

patent applications and legal services, including

ﬁlings with the Ofﬁce, produced by the clinic; and

(v) Comply with all additional criteria

established by the OED Director.

(2) Trademark Faculty Clinic Supervisor.

A Faculty Clinic Supervisor for a law school clinic’s

trademark practice must:

(i) Be an attorney as deﬁned in § 11.1;

(ii) Demonstrate at least 3 years

experience in prosecuting trademark applications

before the Ofﬁce within the 5 years immediately

prior to the date of the request for approval as a

Faculty Clinic Supervisor;

(iii) Assume full responsibility for the

instruction, guidance, and supervision of law

students participating in the law school clinic's

trademark practice;

(iv) Assume full responsibility for all

trademark applications and legal services, including

ﬁlings with the Ofﬁce, produced by the clinic; and

(v) Comply with all additional criteria

established by the OED Director.

(3) A Faculty Clinic Supervisor under

paragraph (c) of this section must submit a

statement:

(i) Assuming responsibility for

performing conﬂicts checks for each law student

and client in the relevant clinic practice area;

(ii) Assuming responsibility for student

instruction and work, including instructing,

mentoring, overseeing, and supervising all

participating law school students in the clinic’s

relevant practice area;

(iii) Assuming responsibility for content

and timeliness of all applications and documents

submitted to the Ofﬁce through the relevant practice

area of the clinic;

(iv) Assuming responsibility for all

communications by clinic students to clinic clients

in the relevant clinic practice area;

(v) Assuming responsibility for ensuring

that there is no gap in representation of clinic clients

in the relevant practice area during student turnover,

school schedule variations, inter-semester

transitions, or other disruptions;

(vi) Attesting to meeting the criteria of

paragraph (c)(1) or (2) of this section based on

relevant practice area of the clinic; and

(vii) Attesting to all other criteria as

established by the OED Director.

(d) Limited recognition for law students

participating in the USPTO Law School Clinic

Certiﬁcation Program.

(1) The OED Director may grant limited

recognition to practice before the Ofﬁce in patent

or trademark matters, or both, to law school students

enrolled in a clinic of a law school that is

participating in the USPTO Law School Clinic

Certiﬁcation Program upon submission and approval

of an application by a law student to OED in

accordance with criteria established by the OED

Director.

(2) In order to be granted limited

recognition to practice before the Ofﬁce in patent

matters under the USPTO Law School Clinic

Certiﬁcation Program, a law student must:

R-330January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.16

(i) Be enrolled in a law school that is

an active participant in the USPTO Law School

Clinic Certiﬁcation Program;

(ii) Be enrolled in the patent practice

area of a clinic of the participating law school;

(iii) Have successfully completed at

least one year of law school or the equivalent;

(iv) Have read the USPTO Rules of

Professional Conduct and the relevant rules of

practice and procedure for patent matters;

(v) Be supervised by an approved

Faculty Clinic Supervisor pursuant to paragraph

(c)(1) of this section;

(vi) Be certiﬁed by the dean of the

participating law school, or one authorized to act

for the dean, as: Having completed the ﬁrst year of

law school or the equivalent, being in compliance

with the law school’s ethics code, and being of good

moral character and reputation;

(vii) Neither ask for nor receive any

fee or compensation of any kind for legal services

from a clinic client on whose behalf service is

rendered;

(viii) Have proved to the satisfaction

of the OED Director that he or she possesses the

scientiﬁc and technical qualiﬁcations necessary for

him or her to render patent applicants valuable

service; and

(ix) Comply with all additional

criteria established by the OED Director.

(3) In order to be granted limited

recognition to practice before the Ofﬁce in

trademark matters under the USPTO Law School

Clinic Certiﬁcation Program, a law student must:

(i) Be enrolled in a law school that is

an active participant in the USPTO Law School

Clinic Certiﬁcation Program;

(ii) Be enrolled in the trademark

practice area of a clinic of the participating law

school;

(iii) Have successfully completed at

least one year of law school or the equivalent;

(iv) Have read the USPTO Rules of

Professional Conduct and the relevant USPTO rules

of practice and procedure for trademark matters;

(v) Be supervised by an approved

Faculty Clinic Supervisor pursuant to paragraph

(c)(2) of this section;

(vi) Be certiﬁed by the dean of the

participating law school, or one authorized to act

for the dean, as: Having completed the ﬁrst year of

law school or the equivalent, being in compliance

with the law school’s ethics code, and being of good

moral character and reputation;

(vii) Neither ask for nor receive any

fee or compensation of any kind for legal services

from a clinic client on whose behalf service is

rendered; and

(viii) Comply with all additional

criteria established by the OED Director.

(4) Students registered to practice before

the Ofﬁce in patent matters as a patent agent, or

authorized to practice before the Ofﬁce in trademark

matters under § 11.14, must complete and submit a

student application pursuant to paragraph (d)(1) of

this section and meet the criteria of paragraph (d)(2)

or (3) of this section, as applicable, in order to

participate in the program.

[Added, 81 FR 33591, May 27, 2016, effective

June 27, 2016]

§ 11.17 Requirements for participation in

the USPTO Law School Clinic Certiﬁcation

Program.

(a) Each law school participating in the USPTO

Law School Clinic Certiﬁcation Program must

provide its patent and/or trademark services on a

pro bono basis.

(b) Each law school participating in the USPTO

Law School Clinic Certiﬁcation Program shall, on

a semiannual basis, provide OED with a report

regarding its clinic activity during the reporting

period, which shall include:

(1) The number of law students participating

in each of the patent and trademark practice areas

of the school’s clinic;

(2) The number of faculty participating in

each of the patent and trademark practice areas of

the school’s clinic;

(3) The number of persons to whom the

school’s clinic provided assistance in any given

January 2018R-331

§ 11.17CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

patent or trademark matter but with whom no

practitioner-client relationship had formed;

(4) The number of client representations

undertaken for each of the patent and trademark

practice areas of the school’s clinic;

(5) The identity and number of applications

and responses ﬁled in each of the patent and/or

trademark practice areas of the school’s clinic;

(6) The number of patents issued, or

trademarks registered, to clients of the clinic; and

(7) All other information speciﬁed by the

OED Director.

the USPTO Law School Certiﬁcation Program.

(1) The OED Director may inactivate a

patent and/or trademark practice area of a

participating law school:

(i) If the participating law school does

not have an approved Faculty Clinic Supervisor for

the relevant practice area, as described in § 11.16(c);

(ii) If the participating law school does

not meet each of the requirements and criteria for

participation in the USPTO Law School Clinic

Certiﬁcation Program as set forth in § 11.16, this

section, or as otherwise established by the OED

Director; or

(iii) For other good cause as determined

by the OED Director.

(2) In the event that a practice area of a

participating school is inactivated, the participating

law school students must:

(i) Immediately cease all student practice

before the Ofﬁce in the relevant practice area and

notify each client of such; and

(ii) Disassociate themselves from all

client matters relating to practice before the Ofﬁce

in the relevant practice area, including complying

with Ofﬁce and State rules for withdrawal from

representation.

(3) A patent or trademark practice area of a

law school clinic that has been inactivated may be

restored to active status, upon application to and

approval by the OED Director.

(d) Removal of law schools participating in the

USPTO Law School Clinic Certiﬁcation Program.

(1) The OED Director may remove a patent

and/or trademark practice area of the clinic of a law

school participating in the USPTO Law School

Clinic Certiﬁcation Program:

(i) Upon request from the law school;

(ii) If the participating law school does

not meet each of the requirements and criteria for

participation in the USPTO Law School Clinic

Certiﬁcation Program as set forth in § 11.16, this

section, or as otherwise established by the OED

Director; or

(iii) For other good cause as determined

by the OED Director.

(2) In the event that a practice area of a

participating school is removed by the OED

Director, the participating law school students must:

(i) Immediately cease all student practice

before the Ofﬁce in the relevant practice area and

notify each client of such; and

(ii) Disassociate themselves from all

client matters relating to practice before the Ofﬁce

in the relevant practice area, including complying

with Ofﬁce and State rules for withdrawal from

representation.

(3) A school that has been removed from

participation in the USPTO Law School Clinic

Certiﬁcation Program under this section may reapply

to the program in compliance with § 11.16.

[Added, 81 FR 33591, May 27, 2016, effective

June 27, 2016]

§ 11.18 Signature and certiﬁcate for

correspondence ﬁled in the Ofﬁce.

(a) For all documents ﬁled in the Ofﬁce in

patent, trademark, and other non-patent matters, and

all documents ﬁled with a hearing ofﬁcer in a

disciplinary proceeding, except for correspondence

that is required to be signed by the applicant or

party, each piece of correspondence ﬁled by a

practitioner in the Ofﬁce must bear a signature,

personally signed or inserted by such practitioner,

in compliance with § 1.4(d) or § 2.193(a) of this

chapter.

(b) By presenting to the Ofﬁce or hearing ofﬁcer

in a disciplinary proceeding (whether by signing,

ﬁling, submitting, or later advocating) any paper,

R-332January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.18

the party presenting such paper, whether a

practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s

own knowledge are true, all statements made therein

on information and belief are believed to be true,

and all statements made therein are made with the

knowledge that whoever, in any matter within the

jurisdiction of the Ofﬁce, knowingly and willfully

falsiﬁes, conceals, or covers up by any trick,

scheme, or device a material fact, or knowingly and

willfully makes any false, ﬁctitious, or fraudulent

statements or representations, or knowingly and

willfully makes or uses any false writing or

document knowing the same to contain any false,

ﬁctitious, or fraudulent statement or entry, shall be

subject to the penalties set forth under 18 U.S.C.

1001 and any other applicable criminal statute, and

violations of the provisions of this section may

jeopardize the probative value of the paper; and

(2) To the best of the party’s knowledge,

information and belief, formed after an inquiry

reasonable under the circumstances,

(i) The paper is not being presented for

any improper purpose, such as to harass someone

or to cause unnecessary delay or needless increase

in the cost of any proceeding before the Ofﬁce;

(ii) The other legal contentions therein

are warranted by existing law or by a nonfrivolous

argument for the extension, modiﬁcation, or reversal

of existing law or the establishment of new law;

(iii) The allegations and other factual

contentions have evidentiary support or, if

speciﬁcally so identiﬁed, are likely to have

evidentiary support after a reasonable opportunity

for further investigation or discovery; and

(iv) The denials of factual contentions

are warranted on the evidence, or if speciﬁcally so

identiﬁed, are reasonably based on a lack of

information or belief.

through (iv) of this section are, after notice and

reasonable opportunity to respond, subject to such

sanctions or actions as deemed appropriate by the

USPTO Director, which may include, but are not

limited to, any combination of—

(1) Striking the offending paper;

(2) Referring a practitioner’s conduct to the

Director of Enrollment and Discipline for

appropriate action;

(3) Precluding a party or practitioner from

submitting a paper, or presenting or contesting an

issue;

(4) Affecting the weight given to the

offending paper; or

(5) Terminating the proceedings in the

Ofﬁce.

(d) Any practitioner violating the provisions of

this section may also be subject to disciplinary

action.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; para. (a) revised, 78 FR 62368, Oct. 21,

2013, effective Dec. 18, 2013]

Subpart C — Investigations and Disciplinary

Proceedings; Jurisdiction, Sanctions,

Investigations, and Proceedings

§ 11.19 Disciplinary jurisdiction;

Jurisdiction to transfer to disability inactive

status.

(a) All practitioners engaged in practice before

the Ofﬁce; all practitioners administratively

suspended; all practitioners registered to practice

before the Ofﬁce in patent cases; all practitioners

inactivated; all practitioners authorized under §

11.6(d) to take testimony; and all practitioners

transferred to disability inactive status, reprimanded,

suspended, or excluded from the practice of law by

a duly constituted authority, including by the

USPTO Director, are subject to the disciplinary

jurisdiction of the Ofﬁce. Practitioners who have

resigned shall also be subject to such jurisdiction

with respect to conduct undertaken prior to the

resignation and conduct in regard to any practice

before the Ofﬁce following the resignation. A person

not registered or recognized to practice before the

Ofﬁce is also subject to the disciplinary authority

of the Ofﬁce if the person provides or offers to

provide any legal services before the Ofﬁce.

(b) Grounds for discipline; Grounds for

transfer to disability inactive status. The following,

whether done individually by a practitioner or in

concert with any other person or persons and

January 2018R-333

§ 11.19CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

whether or not done in the course of providing legal

services to a client, or in a matter pending before

the Ofﬁce, constitute grounds for discipline or

grounds for transfer to disability inactive status.

(1) Grounds for discipline include:

(i) Conviction of a serious crime;

(ii) Discipline on ethical grounds

imposed in another jurisdiction or disciplinary

disqualiﬁcation from participating in or appearing

before any Federal program or agency;

(iii) Failure to comply with any order of

a Court disciplining a practitioner, or any ﬁnal

decision of the USPTO Director in a disciplinary

matter;

(iv) Violation of any USPTO Rule of

Professional Conduct; or

(v) Violation of the oath or declaration

taken by the practitioner. See § 11.8.

(2) Grounds for transfer to disability inactive

status include:

(i) Being transferred to disability inactive

status in another jurisdiction;

(ii) Being judicially declared

incompetent, being judicially ordered to be

involuntarily committed after a hearing on the

grounds of insanity, incompetency or disability, or

being placed by court order under guardianship or

conservatorship; or

(iii) Filing a motion requesting a

disciplinary proceeding be held in abeyance because

the practitioner is suffering from a disability or

addiction that makes it impossible for the

practitioner to adequately defend the charges in the

disciplinary proceeding.

parte or inter partes matters in the Ofﬁce are not

governed by §§ 11.19 through 11.60 and will be

handled on a case-by-case basis under such

conditions as the USPTO Director deems

appropriate.

(d) The OED Director may refer the existence

of circumstances suggesting unauthorized practice

of law to the authorities in the appropriate

jurisdiction(s).

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; paras. (a) and (b)(1)(iv) revised, 78 FR

20180, Apr. 3, 2013, effective May 3, 2013]

§ 11.20 Disciplinary sanctions; Transfer to

disability inactive status.

(a) Types of discipline. The USPTO Director,

after notice and opportunity for a hearing, and where

grounds for discipline exist, may impose on a

practitioner the following types of discipline:

(1) Exclusion from practice before the

Ofﬁce;

(2) Suspension from practice before the

Ofﬁce for an appropriate period of time;

(3) Reprimand or censure; or

(4) Probation. Probation may be imposed

in lieu of or in addition to any other disciplinary

sanction. Any conditions of probation shall be stated

in writing in the order imposing probation. The order

shall also state whether, and to what extent, the

practitioner shall be required to notify clients of the

probation. Violation of any condition of probation

shall be cause for imposition of the disciplinary

sanction. Imposition of the disciplinary sanction

predicated upon violation of probation shall occur

only after an order to show cause why the

disciplinary sanction should not be imposed is

resolved adversely to the practitioner.

(b) Conditions imposed with discipline. When

imposing discipline, the USPTO Director may

condition reinstatement upon the practitioner making

restitution, successfully completing a professional

responsibility course or examination, or any other

condition deemed appropriate under the

circumstances.

USPTO Director, after notice and opportunity for a

hearing may, and where grounds exist to believe a

practitioner has been transferred to disability

inactive status in another jurisdiction, or has been

judicially declared incompetent; judicially ordered

to be involuntarily committed after a hearing on the

grounds of incompetency or disability, or placed by

court order under guardianship or conservatorship,

transfer the practitioner to disability inactive status.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; paras. (a)(4) and (b) revised, 78 FR 20180,

Apr. 3, 2013, effective May 3, 2013]

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.20

§ 11.21 Warnings.

A warning is neither public nor a disciplinary

sanction. The OED Director may conclude an

investigation with the issuance of a warning. The

warning shall contain a brief statement of facts and

USPTO Rules of Professional Conduct relevant to

the facts.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; revised, 78 FR 20180, Apr. 3, 2013,

effective May 3, 2013]

§ 11.22 Disciplinary Investigations.

(a) The OED Director is authorized to

investigate possible grounds for discipline. An

investigation may be initiated when the OED

Director receives a grievance, information or

evidence from any source suggesting possible

grounds for discipline. Neither unwillingness nor

neglect by a grievant to prosecute a charge, nor

settlement, compromise, or restitution with the

grievant, shall in itself justify abatement of an

investigation.

(b) Any person possessing information or

evidence concerning possible grounds for discipline

of a practitioner may report the information or

evidence to the OED Director. The OED Director

may request that the report be presented in the form

of an afﬁdavit or declaration.

(d) Preliminary screening of information or

evidence. The OED Director shall examine all

information or evidence concerning possible grounds

for discipline of a practitioner.

(e) Notiﬁcation of investigation. The OED

Director shall notify the practitioner in writing of

the initiation of an investigation into whether a

practitioner has engaged in conduct constituting

possible grounds for discipline.

(f) Request for information and evidence by

OED Director.

(1) In the course of the investigation, the

OED Director may request information and evidence

regarding possible grounds for discipline of a

practitioner from:

(i) The grievant,

(ii) The practitioner, or

(iii) Any person who may reasonably be

expected to provide information and evidence

needed in connection with the grievance or

investigation.

(2) The OED Director may request

information and evidence regarding possible grounds

for discipline of a practitioner from a non-grieving

client either after obtaining the consent of the

practitioner or upon a ﬁnding by a Contact Member

of the Committee on Discipline, appointed in

accordance with § 11.23(d), that good cause exists

to believe that the possible ground for discipline

alleged has occurred with respect to non-grieving

clients. Neither a request for, nor disclosure of, such

information shall constitute a violation of any

USPTO Rules of Professional Conduct.

(g) Where the OED Director makes a request

under paragraph (f)(2) of this section to a Contact

Member of the Committee on Discipline, such

Contact Member shall not, with respect to the

practitioner connected to the OED Director’s

request, participate in the Committee on Discipline

panel that renders a probable cause determination

under paragraph (b)(1) of this section concerning

such practitioner, and that forwards the probable

cause ﬁnding and recommendation to the OED

Director under paragraph (b)(2) of this section.

(h) Disposition of investigation. Upon the

conclusion of an investigation, the OED Director

may:

(1) Close the investigation without issuing

a warning, or taking disciplinary action;

(2) Issue a warning to the practitioner;

(3) Institute formal charges upon the

approval of the Committee on Discipline; or

(4) Enter into a settlement agreement with

the practitioner and submit the same for approval

of the USPTO Director.

(i) Closing investigation. The OED Director

shall terminate an investigation and decline to refer

a matter to the Committee on Discipline if the OED

Director determines that:

(1) The information or evidence is

unfounded;

(2) The information or evidence relates to

matters not within the jurisdiction of the Ofﬁce;

January 2018R-335

§ 11.22CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(3) As a matter of law, the conduct about

which information or evidence has been obtained

does not constitute grounds for discipline, even if

the conduct may involve a legal dispute; or

(4) The available evidence is insufﬁcient to

conclude that there is probable cause to believe that

grounds exist for discipline.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; para. (c) removed and reserved, 77 FR

45247, July 31, 2012, effective August 30, 2012; section

heading, para. (f)(2), and para. (i) introductory text

revised, 78 FR 20180, Apr. 3, 2013, effective May 3,

2013]

§ 11.23 Committee on Discipline.

(a) The USPTO Director shall appoint a

Committee on Discipline. The Committee on

Discipline shall consist of at least three employees

of the Ofﬁce. None of the Committee members shall

report directly or indirectly to the OED Director or

any employee designated by the USPTO Director

to decide disciplinary matters. Each Committee

member shall be a member in good standing of the

bar of the highest court of a State. The Committee

members shall select a Chairperson from among

themselves. Three Committee members will

constitute a panel of the Committee.

(b) Powers and duties of the Committee on

Discipline. The Committee shall have the power

and duty to:

(1) Meet in panels at the request of the OED

Director and, after reviewing evidence presented by

the OED Director, by majority vote of the panel,

determine whether there is probable cause to bring

charges under § 11.32 against a practitioner; and

(2) Prepare and forward its own probable

cause ﬁndings and recommendations to the OED

Director.

member of the Committee on Discipline shall be

required to testify about deliberations of, the

Committee on Discipline or of any panel.

(d) The Chairperson shall appoint the members

of the panels and a Contact Member of the

Committee on Discipline.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.24 Reciprocal discipline.

(a) Notiﬁcation of OED Director. Within thirty

days of being publicly censured, publicly

reprimanded, subjected to probation, disbarred or

suspended by another jurisdiction, or being

disciplinarily disqualiﬁed from participating in or

appearing before any Federal program or agency, a

practitioner subject to the disciplinary jurisdiction

of the Ofﬁce shall notify the OED Director in

writing of the same. A practitioner is deemed to be

disbarred if he or she is disbarred, excluded on

consent, or has resigned in lieu of a disciplinary

proceeding. Upon receiving notiﬁcation from any

source or otherwise learning that a practitioner

subject to the disciplinary jurisdiction of the Ofﬁce

has been so publicly censured, publicly reprimanded,

subjected to probation, disbarred, suspended or

disciplinarily disqualiﬁed, the OED Director shall

obtain a certiﬁed copy of the record or order

regarding the public censure, public reprimand,

probation, disbarment, suspension or disciplinary

disqualiﬁcation and ﬁle the same with the USPTO

Director. The OED Director shall, in addition,

without Committee on Discipline authorization, ﬁle

with the USPTO Director a complaint complying

with § 11.34 against the practitioner predicated upon

the public censure, public reprimand, probation,

disbarment, suspension or disciplinary

disqualiﬁcation. The OED Director shall request

the USPTO Director to issue a notice and order as

set forth in paragraph (b) of this section.

(b) Notiﬁcation served on practitioner. Upon

receipt of a certiﬁed copy of the record or order

regarding the practitioner being so publicly

censured, publicly reprimanded, subjected to

probation, disbarred, suspended or disciplinarily

disqualiﬁed together with the complaint, the USPTO

Director shall issue a notice directed to the

practitioner in accordance with § 11.35 and to the

OED Director containing:

(1) A copy of the record or order regarding

the public censure, public reprimand, probation,

disbarment, suspension or disciplinary

disqualiﬁcation;

(2) A copy of the complaint; and

(3) An order directing the practitioner to ﬁle

a response with the USPTO Director and the OED

Director, within forty days of the date of the notice

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.23

establishing a genuine issue of material fact

predicated upon the grounds set forth in paragraphs

(d)(1)(i) through (d)(1)(iv) of this section that the

imposition of the identical public censure, public

reprimand, probation, disbarment, suspension or

disciplinary disqualiﬁcation would be unwarranted

and the reasons for that claim.

event the public censure, public reprimand,

probation, disbarment, suspension imposed by

another jurisdiction or disciplinary disqualiﬁcation

imposed in the Federal program or agency has been

stayed, any reciprocal discipline imposed by the

USPTO may be deferred until the stay expires.

(d) Hearing and discipline to be imposed.

(1) The USPTO Director shall hear the

matter on the documentary record unless the USPTO

Director determines that an oral hearing is necessary.

After expiration of the forty days from the date of

the notice pursuant to provisions of paragraph (b)

of this section, the USPTO Director shall consider

any timely ﬁled response and shall impose the

identical public censure, public reprimand,

probation, disbarment, suspension or disciplinary

disqualiﬁcation unless the practitioner clearly and

convincingly demonstrates, and the USPTO Director

ﬁnds there is a genuine issue of material fact that:

(i) The procedure elsewhere was so

lacking in notice or opportunity to be heard as to

constitute a deprivation of due process;

(ii) There was such inﬁrmity of proof

establishing the conduct as to give rise to the clear

conviction that the Ofﬁce could not, consistently

with its duty, accept as ﬁnal the conclusion on that

subject;

(iii) The imposition of the same public

censure, public reprimand, probation, disbarment,

suspension or disciplinary disqualiﬁcation by the

Ofﬁce would result in grave injustice; or

(iv) Any argument that the practitioner

was not publicly censured, publicly reprimanded,

placed on probation, disbarred, suspended or

disciplinarily disqualiﬁed.

(2) If the USPTO Director determines that

there is no genuine issue of material fact, the

USPTO Director shall enter an appropriate ﬁnal

order. If the USPTO Director is unable to make such

determination because there is a genuine issue of

material fact, the USPTO Director shall enter an

appropriate order:

(i) Referring the complaint to a hearing

ofﬁcer for a formal hearing and entry of an initial

decision in accordance with the other rules in this

part, and

(ii) Directing the practitioner to ﬁle an

answer to the complaint in accordance with § 11.36.

(e) Adjudication in another jurisdiction or

Federal agency or program. In all other respects, a

ﬁnal adjudication in another jurisdiction or Federal

agency or program that a practitioner, whether or

not admitted in that jurisdiction, has been guilty of

misconduct shall establish a prima facie case by

clear and convincing evidence that the practitioner

has engaged in misconduct under § 11.804.

(f) Reciprocal discipline —action where

practice has ceased. Upon request by the

practitioner, reciprocal discipline may be imposed

nunc pro tunc only if the practitioner promptly

notiﬁed the OED Director of his or her censure,

public reprimand, probation, disbarment, suspension

or disciplinary disqualiﬁcation in another

jurisdiction, and establishes by clear and convincing

evidence that the practitioner voluntarily ceased all

activities related to practice before the Ofﬁce and

complied with all provisions of § 11.58. The

effective date of any public censure, public

reprimand, probation, suspension, disbarment or

disciplinary disqualiﬁcation imposed nunc pro tunc

shall be the date the practitioner voluntarily ceased

all activities related to practice before the Ofﬁce

and complied with all provisions of § 11.58.

(g) Reinstatement following reciprocal

discipline proceeding. A practitioner may petition

for reinstatement under conditions set forth in §

11.60 no sooner than completion of the period of

reciprocal discipline imposed, and compliance with

all provisions of § 11.58.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; para. (e) revised, 78 FR 20180, Apr. 3,

2013, effective May 3, 2013]

§ 11.25 Interim suspension and discipline

based upon conviction of committing a

serious crime.

(a) Notiﬁcation of OED Director. Upon being

convicted of a crime in a court of the United States,

January 2018R-337

§ 11.25CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

any State, or a foreign country, a practitioner subject

to the disciplinary jurisdiction of the Ofﬁce shall

notify the OED Director in writing of the same

within thirty days from the date of such conviction.

Upon being advised or learning that a practitioner

subject to the disciplinary jurisdiction of the Ofﬁce

has been convicted of a crime, the OED Director

shall make a preliminary determination whether the

crime constitutes a serious crime warranting interim

suspension. If the crime is a serious crime, the OED

Director shall ﬁle with the USPTO Director proof

of the conviction and request the USPTO Director

to issue a notice and order set forth in paragraph

(b)(2) of this section. The OED Director shall in

addition, without Committee on Discipline

authorization, ﬁle with the USPTO Director a

complaint against the practitioner complying with

§ 11.34 predicated upon the conviction of a serious

crime. If the crime is not a serious crime, the OED

Director shall process the matter in the same manner

as any other information or evidence of a possible

violation of any USPTO Rule of Professional

Conduct coming to the attention of the OED

Director.

(b) Interim suspension and referral for

disciplinary proceeding. All proceedings under this

section shall be handled as expeditiously as possible.

(1) The USPTO Director has authority to

place a practitioner on interim suspension after

hearing the request for interim suspension on the

documentary record.

(2) Notiﬁcation served on practitioner.

Upon receipt of a certiﬁed copy of the court record,

docket entry or judgment demonstrating that the

practitioner has been so convicted together with the

complaint, the USPTO Director shall forthwith issue

a notice directed to the practitioner in accordance

with §§ 11.35(a), (b), or (c), and to the OED

Director, containing:

(i) A copy of the court record, docket

entry, or judgment of conviction;

(ii) A copy of the complaint; and

(iii) An order directing the practitioner

to ﬁle a response with the USPTO Director and the

OED Director, within forty days of the date of the

notice, establishing that there is a genuine issue of

material fact that the crime did not constitute a

serious crime, the practitioner is not the individual

found guilty of the crime, or that the conviction was

so lacking in notice or opportunity to be heard as to

constitute a deprivation of due process.

(3) Hearing and ﬁnal order on request for

interim suspension. The request for interim

suspension shall be heard by the USPTO Director

on the documentary record unless the USPTO

Director determines that the practitioner’s response

establishes a genuine issue of material fact that: The

crime did not constitute a serious crime, the

practitioner is not the person who committed the

crime, or that the conviction was so lacking in notice

or opportunity to be heard as to constitute a

deprivation of due process. If the USPTO Director

determines that there is no genuine issue of material

fact regarding the defenses set forth in the preceding

sentence, the USPTO Director shall enter an

appropriate ﬁnal order regarding the OED Director’s

request for interim suspension regardless of the

pendency of any criminal appeal. If the USPTO

Director is unable to make such determination

because there is a genuine issue of material fact, the

USPTO Director shall enter a ﬁnal order dismissing

the request and enter a further order referring the

complaint to a hearing ofﬁcer for a hearing and entry

of an initial decision in accordance with the other

rules in this part and directing the practitioner to ﬁle

an answer to the complaint in accordance with §

11.36.

(4) Termination. The USPTO Director has

authority to terminate an interim suspension. In the

interest of justice, the USPTO Director may

terminate an interim suspension at any time upon a

showing of extraordinary circumstances, after

affording the OED Director an opportunity to

respond to the request to terminate interim

suspension.

(5) Referral for disciplinary proceeding.

Upon entering a ﬁnal order imposing interim

suspension, the USPTO Director shall refer the

complaint to a hearing ofﬁcer to conduct a formal

disciplinary proceeding. The formal disciplinary

proceeding, however, shall be stayed by the hearing

ofﬁcer until all direct appeals from the conviction

are concluded. Review of the initial decision of the

hearing ofﬁcer shall be pursuant to § 11.55.

Conviction in the United States. For purposes of a

hearing for interim suspension and a hearing on the

formal charges in a complaint ﬁled as a consequence

R-338January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.25

of the conviction, a certiﬁed copy of the court

record, docket entry, or judgment of conviction in

a court of the United States or any State shall

establish a prima facie case by clear and convincing

evidence that the practitioner was convicted of a

serious crime and that the conviction was not lacking

in notice or opportunity to be heard as to constitute

a deprivation of due process.

(2) Conviction in a foreign country. For

purposes of a hearing for interim suspension and on

the formal charges ﬁled as a result of a ﬁnding of

guilt, a certiﬁed copy of the court record, docket

entry, or judgment of conviction in a court of a

foreign country shall establish a prima facie case by

clear and convincing evidence that the practitioner

was convicted of a serious crime and that the

conviction was not lacking in notice or opportunity

to be heard as to constitute a deprivation of due

process. However, nothing in this paragraph shall

preclude the practitioner from demonstrating by

clear and convincing evidence in any hearing on a

request for interim suspension there is a genuine

issue of material fact to be considered when

determining if the elements of a serious crime were

committed in violating the criminal law of the

foreign country and whether a disciplinary sanction

should be entered.

(d) Crime determined not to be serious crime.

If the USPTO Director determines that the crime is

not a serious crime, the complaint shall be referred

to the OED Director for investigation under § 11.22

and processing as is appropriate.

(e) Reinstatement—(1) Upon reversal or

setting aside a ﬁnding of guilt or a conviction. If a

practitioner suspended solely under the provisions

of paragraph (b) of this section demonstrates that

the underlying ﬁnding of guilt or conviction of

serious crimes has been reversed or vacated, the

order for interim suspension shall be vacated and

the practitioner shall be placed on active status

unless the ﬁnding of guilt was reversed or the

conviction was set aside with respect to less than

all serious crimes for which the practitioner was

found guilty or convicted. The vacating of the

interim suspension will not terminate any other

disciplinary proceeding then pending against the

practitioner, the disposition of which shall be

determined by the hearing ofﬁcer before whom the

matter is pending, on the basis of all available

evidence other than the ﬁnding of guilt or

conviction.

(2) Following conviction of a serious crime.

Any practitioner convicted of a serious crime and

disciplined in whole or in part in regard to that

conviction, may petition for reinstatement under

conditions set forth in § 11.60 no sooner than ﬁve

years after being discharged following completion

of service of his or her sentence, or after completion

of service under probation or parole, whichever is

later.

(f) Notice to clients and others of interim

suspension. An interim suspension under this

section shall constitute a suspension of the

practitioner for the purpose of § 11.58.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; para. (a) revised, 78 FR 20180, Apr. 3,

2013, effective May 3, 2013]

§ 11.26 Settlement.

Before or after a complaint under § 11.34 is ﬁled,

a settlement conference may occur between the OED

Director and the practitioner. Any offers of

compromise and any statements made during the

course of settlement discussions shall not be

admissible in subsequent proceedings. The OED

Director may recommend to the USPTO Director

any settlement terms deemed appropriate, including

steps taken to correct or mitigate the matter forming

the basis of the action, or to prevent recurrence of

the same or similar conduct. A settlement agreement

shall be effective only upon entry of a ﬁnal decision

by the USPTO Director.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.27 Exclusion on consent.

(a) Required afﬁdavit. The OED Director may

confer with a practitioner concerning possible

violations by the practitioner of the Rules of

Professional Conduct whether or not a disciplinary

proceeding has been instituted. A practitioner who

is the subject of an investigation or a pending

disciplinary proceeding based on allegations of

grounds for discipline, and who desires to resign,

may only do so by consenting to exclusion and

delivering to the OED Director an afﬁdavit declaring

January 2018R-339

§ 11.27CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

the consent of the practitioner to exclusion and

stating:

(1) That the practitioner’s consent is freely

and voluntarily rendered, that the practitioner is not

being subjected to coercion or duress, and that the

practitioner is fully aware of the implications of

consenting to exclusion;

(2) That the practitioner is aware that there

is currently pending an investigation into, or a

proceeding involving allegations of misconduct, the

nature of which shall be speciﬁcally set forth in the

afﬁdavit to the satisfaction of the OED Director;

(3) That the practitioner acknowledges that,

if and when he or she applies for reinstatement under

§ 11.60, the OED Director will conclusively

presume, for the limited purpose of determining the

application for reinstatement, that:

(i) The facts upon which the investigation

or complaint is based are true, and

(ii) The practitioner could not have

successfully defended himself or herself against the

allegations in the investigation or charges in the

complaint.

(b) Action by the USPTO Director. Upon

receipt of the required afﬁdavit, the OED Director

shall ﬁle the afﬁdavit and any related papers with

the USPTO Director for review and approval. Upon

such approval, the USPTO Director will enter an

order excluding the practitioner on consent and

providing other appropriate actions. Upon entry of

the order, the excluded practitioner shall comply

with the requirements set forth in § 11.58.

this section is received after a complaint under §

11.34 has been ﬁled, the OED Director shall notify

the hearing ofﬁcer. The hearing ofﬁcer shall enter

an order transferring the disciplinary proceeding to

the USPTO Director, who may enter an order

excluding the practitioner on consent.

(d) Reinstatement. Any practitioner excluded

on consent under this section may not petition for

reinstatement for ﬁve years. A practitioner excluded

on consent who intends to reapply for admission to

practice before the Ofﬁce must comply with the

provisions of § 11.58, and apply for reinstatement

in accordance with § 11.60. Failure to comply with

the provisions of § 11.58 constitutes grounds for

denying an application for reinstatement.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.28 Incapacitated practitioners in a

disciplinary proceeding.

(a) Holding in abeyance a disciplinary

proceeding because of incapacitation due to a

current disability or addiction —

(1) Practitioner’s motion. In the course of

a disciplinary proceeding under § 11.32, but before

the date set by the hearing ofﬁcer for a hearing, the

practitioner may ﬁle a motion requesting the hearing

ofﬁcer to enter an order holding such proceeding in

abeyance based on the contention that the

practitioner is suffering from a disability or addiction

that makes it impossible for the practitioner to

adequately defend the charges in the disciplinary

proceeding.

(i) Content of practitioner’s motion. The

practitioner’s motion shall, in addition to any other

requirement of § 11.43, include or have attached

thereto:

(A) A brief statement of all material

facts;

(B) Afﬁdavits, medical reports,

ofﬁcial records, or other documents and the opinion

of at least one medical expert setting forth and

establishing any of the material facts on which the

practitioner is relying;

acknowledges the alleged incapacity by reason of

disability or addiction;

(D) Written consent that the

practitioner be transferred to disability inactive

status if the motion is granted; and

(E) A written agreement by the

practitioner to not practice before the Ofﬁce in

patent, trademark or other non-patent cases while

on disability inactive status.

(ii) Response. The OED Director’s

response to any motion hereunder shall be served

and ﬁled within thirty days after service of the

practitioner’s motion unless such time is shortened

or enlarged by the hearing ofﬁcer for good cause

shown, and shall set forth the following:

(A) All objections, if any, to the

actions requested in the motion;

R-340January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.28

(B) An admission, denial or

allegation of lack of knowledge with respect to each

of the material facts in the practitioner’s motion and

accompanying documents; and

ofﬁcial records, or other documents setting forth

facts on which the OED Director intends to rely for

purposes of disputing or denying any material fact

set forth in the practitioner’s papers.

(2) Disposition of practitioner’s motion.

The hearing ofﬁcer shall decide the motion and any

response thereto. The motion shall be granted upon

a showing of good cause to believe the practitioner

to be incapacitated as alleged. If the required

showing is made, the hearing ofﬁcer shall enter an

order holding the disciplinary proceeding in

abeyance. In the case of addiction to drugs or

intoxicants, the order may provide that the

practitioner will not be returned to active status

absent satisfaction of speciﬁed conditions. Upon

receipt of the order, the OED Director shall transfer

the practitioner to disability inactive status, give

notice to the practitioner, cause notice to be

published, and give notice to appropriate authorities

in the Ofﬁce that the practitioner has been placed

on disability inactive status. The practitioner shall

comply with the provisions of § 11.58, and shall not

engage in practice before the Ofﬁce in patent,

trademark and other non-patent law until a

determination is made of the practitioner’s capability

to resume practice before the Ofﬁce in a proceeding

under paragraph (c) or paragraph (d) of this section.

A practitioner on disability inactive status must seek

permission from the OED Director to engage in an

activity authorized under § 11.58(e). Permission

will be granted only if the practitioner has complied

with all the conditions of §§ 11.58(a) through

11.58(d) applicable to disability inactive status. In

the event that permission is granted, the practitioner

shall fully comply with the provisions of § 11.58(e).

(b) Motion for reactivation. Any practitioner

transferred to disability inactive status in a

disciplinary proceeding may ﬁle with the hearing

ofﬁcer a motion for reactivation once a year

beginning at any time not less than one year after

the initial effective date of inactivation, or once

during any shorter interval provided by the order

issued pursuant to paragraph (a)(2) of this section

or any modiﬁcation thereof. If the motion is granted,

the disciplinary proceeding shall resume under such

schedule as may be established by the hearing

ofﬁcer.

motion by the practitioner for reactivation alleging

that a practitioner has recovered from a prior

disability or addiction shall be accompanied by all

available medical reports or similar documents

relating thereto. The hearing ofﬁcer may require the

practitioner to present such other information as is

necessary.

(d) OED Director’ s motion to resume

disciplinary proceeding held in abeyance. (1) The

OED Director, having good cause to believe a

practitioner is no longer incapacitated, may ﬁle a

motion requesting the hearing ofﬁcer to terminate

a prior order holding in abeyance any pending

proceeding because of the practitioner’s disability

or addiction. The hearing ofﬁcer shall decide the

matter presented by the OED Director’s motion

hereunder based on the afﬁdavits and other

admissible evidence attached to the OED Director’s

motion and the practitioner’s response. The OED

Director bears the burden of showing by clear and

convincing evidence that the practitioner is able to

defend himself or herself. If there is any genuine

issue as to one or more material facts, the hearing

ofﬁcer will hold an evidentiary hearing.

(2) The hearing ofﬁcer, upon receipt of the

OED Director’s motion under paragraph (d)(1) of

this section, may direct the practitioner to ﬁle a

response. If the hearing ofﬁcer requires the

practitioner to ﬁle a response, the practitioner must

present clear and convincing evidence that the prior

self-alleged disability or addiction continues to make

it impossible for the practitioner to defend himself

or herself in the underlying proceeding being held

in abeyance.

(e) Action by the hearing ofﬁcer. If, in deciding

a motion under paragraph (b) or (d) of this section,

the hearing ofﬁcer determines that there is good

cause to believe the practitioner is not incapacitated

from defending himself or herself, or is not

incapacitated from practicing before the Ofﬁce, the

hearing ofﬁcer shall take such action as is deemed

appropriate, including the entry of an order directing

the reactivation of the practitioner and resumption

of the disciplinary proceeding.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008 ]

January 2018R-341

§ 11.28CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 11.29 Reciprocal transfer or initial transfer

to disability inactive status.

(a) Notiﬁcation of OED Director.

(1) Transfer to disability inactive status in

another jurisdiction as grounds for reciprocal

transfer by the Ofﬁce. Within thirty days of being

transferred to disability inactive status in another

jurisdiction, a practitioner subject to the disciplinary

jurisdiction of the Ofﬁce shall notify the OED

Director in writing of the transfer. Upon notiﬁcation

from any source that a practitioner subject to the

disciplinary jurisdiction of the Ofﬁce has been

transferred to disability inactive status in another

jurisdiction, the OED Director shall obtain a

certiﬁed copy of the order. The OED Director shall

ﬁle with the USPTO Director:

(i) The order;

(ii) A request that the practitioner be

transferred to disability inactive status, including

the speciﬁc grounds therefor; and

(iii) A request that the USPTO Director

issue a notice and order as set forth in paragraph (b)

of this section.

(2) Involuntary commitment, adjudication

of incompetency or court ordered placement under

guardianship or conservatorship as grounds for

initial transfer to disability inactive status. Within

thirty days of being judicially declared incompetent,

being judicially ordered to be involuntarily

committed after a hearing on the grounds of

incompetency or disability, or being placed by court

order under guardianship or conservatorship in

another jurisdiction, a practitioner subject to the

disciplinary jurisdiction of the Ofﬁce shall notify

the OED Director in writing of such judicial action.

Upon notiﬁcation from any source that a practitioner

subject to the disciplinary jurisdiction of the Ofﬁce

has been subject to such judicial action, the OED

Director shall obtain a certiﬁed copy of the order.

The OED Director shall ﬁle with the USPTO

Director:

(i) The order;

(ii) A request that the practitioner be

transferred to disability inactive status, including

the speciﬁc grounds therefor; and

(iii) A request that the USPTO Director

issue a notice and order as set forth in paragraph (b)

of this section.

(b) Notice served on practitioner. Upon receipt

of a certiﬁed copy of an order or declaration issued

by another jurisdiction demonstrating that a

practitioner subject to the disciplinary jurisdiction

of the Ofﬁce has been transferred to disability

inactive status, judicially declared incompetent,

judicially ordered to be involuntarily committed

after a judicial hearing on the grounds of

incompetency or disability, or placed by court order

under guardianship or conservatorship, together with

the OED Director’s request, the USPTO Director

shall issue a notice, comporting with § 11.35,

directed to the practitioner containing:

(1) A copy of the order or declaration from

the other jurisdiction,

(2) A copy of the OED Director’s request;

and

(3) An order directing the practitioner to ﬁle

a response with the USPTO Director and the OED

Director, within 30 days from the date of the notice,

establishing a genuine issue of material fact

supported by an afﬁdavit and predicated upon the

grounds set forth in § 11.29(d)(1) through (4) that

a transfer to disability inactive status would be

unwarranted and the reasons therefor.

incompetence, judicially ordered involuntarily

commitment on the grounds of incompetency or

disability, or court-ordered placement under

guardianship or conservatorship. In the event the

transfer, judicially declared incompetence, judicially

ordered involuntary commitment on the grounds of

incompetency or disability, or court-ordered

placement under guardianship or conservatorship

in the other jurisdiction has been stayed there, any

reciprocal transfer or transfer by the Ofﬁce may be

deferred until the stay expires.

(d) Hearing and transfer to disability inactive

status. The request for transfer to disability inactive

status shall be heard by the USPTO Director on the

documentary record unless the USPTO Director

determines that there is a genuine issue of material

fact, in which case the USPTO Director may deny

the request. Upon the expiration of 30 days from

the date of the notice pursuant to the provisions of

paragraph (b) of this section, the USPTO Director

R-342January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.29

shall consider any timely ﬁled response and impose

the identical transfer to disability inactive status

based on the practitioner’s transfer to disability

status in another jurisdiction, or shall transfer the

practitioner to disability inactive status based on

judicially declared incompetence, judicially ordered

involuntary commitment on the grounds of

incompetency or disability, or court-ordered

placement under guardianship or conservatorship,

unless the practitioner demonstrates by clear and

convincing evidence, or the USPTO Director ﬁnds

there is a genuine issue of material fact by clear and

convincing evidence that:

(1) The procedure was so lacking in notice

or opportunity to be heard as to constitute a

deprivation of due process;

(2) There was such inﬁrmity of proof

establishing the transfer to disability status, judicial

declaration of incompetence, judicial order for

involuntary commitment on the grounds of

incompetency or disability, or placement by court

order under guardianship or conservatorship that

the USPTO Director could not, consistent with

Ofﬁce’s duty, accept as ﬁnal the conclusion on that

subject;

(3) The imposition of the same disability

status or transfer to disability status by the USPTO

Director would result in grave injustice; or

(4) The practitioner is not the individual

transferred to disability status, judicially declared

incompetent, judicially ordered for involuntary

commitment on the grounds of incompetency or

disability, or placed by court order under

guardianship or conservatorship.

(5) If the USPTO Director determines that

there is no genuine issue of material fact with regard

to any of the elements of paragraphs (d)(1) through

(4) of this section, the USPTO Director shall enter

an appropriate ﬁnal order. If the USPTO Director

is unable to make that determination because there

is a genuine issue of material fact, the USPTO

Director shall enter an appropriate order dismissing

the OED Director’s request for such reason.

(e) Adjudication in other jurisdiction. In all

other aspects, a ﬁnal adjudication in another

jurisdiction that a practitioner be transferred to

disability inactive status, is judicially declared

incompetent, is judicially ordered to be involuntarily

committed on the grounds of incompetency or

disability, or is placed by court order under

guardianship or conservatorship shall establish the

disability for purposes of a reciprocal transfer to or

transfer to disability status before the Ofﬁce.

(f) A practitioner who is transferred to disability

inactive status under this section shall be deemed

to have been refused recognition to practice before

the Ofﬁce for purposes of 35 U.S.C. 32.

(g) Order imposing reciprocal transfer to

disability inactive status or order imposing initial

transfer to disability inactive status. An order by

the USPTO Director imposing reciprocal transfer

to disability inactive status, or transferring a

practitioner to disability inactive status shall be

effective immediately, and shall be for an indeﬁnite

period until further order of the USPTO Director.

A copy of the order transferring a practitioner to

disability inactive status shall be served upon the

practitioner, the practitioner’s guardian, and/or the

director of the institution to which the practitioner

has been committed in the manner the USPTO

Director may direct. A practitioner reciprocally

transferred or transferred to disability inactive status

shall comply with the provisions of § 11.58, and

shall not engage in practice before the Ofﬁce in

patent, trademark and other non-patent law unless

and until reinstated to active status.

(h) Conﬁdentiality of proceeding; Orders to be

public—(1) Conﬁdentiality of proceeding. All

proceedings under this section involving allegations

of disability of a practitioner shall be kept

conﬁdential until and unless the USPTO Director

enters an order reciprocally transferring or

transferring the practitioner to disability inactive

status.

(2) Orders to be public. The OED Director

shall publicize any reciprocal transfer to disability

inactive status or transfer to disability inactive status

in the same manner as for the imposition of public

discipline.

(i) Employment of practitioners on disability

inactive status. A practitioner on disability inactive

status must seek permission from the OED Director

to engage in an activity authorized under § 11.58(e).

Permission will be granted only if the practitioner

has complied with all the conditions of §§ 11.58(a)

through 11.58(d) applicable to disability inactive

status. In the event that permission is granted, the

January 2018R-343

§ 11.29CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

practitioner shall fully comply with the provisions

of § 11.58(e).

(j) Reinstatement from disability inactive status.

(1) Generally. No practitioner reciprocally

transferred or transferred to disability inactive status

under this section may resume active status except

by order of the OED Director.

(2) Petition. A practitioner reciprocally

transferred or transferred to disability inactive status

shall be entitled to petition the OED Director for

transfer to active status once a year, or at whatever

shorter intervals the USPTO Director may direct in

the order transferring or reciprocally transferring

the practitioner to disability inactive status or any

modiﬁcation thereof.

(3) Examination. Upon the ﬁling of a

petition for transfer to active status, the OED

Director may take or direct whatever action is

deemed necessary or proper to determine whether

the incapacity has been removed, including a

direction for an examination of the practitioner by

qualiﬁed medical or psychological experts

designated by the OED Director. The expense of

the examination shall be paid and borne by the

practitioner.

(4) Required disclosure, waiver of privilege.

With the ﬁling of a petition for reinstatement to

active status, the practitioner shall be required to

disclose the name of each psychiatrist, psychologist,

physician and hospital or other institution by whom

or in which the practitioner has been examined or

treated for the disability since the transfer to

disability inactive status. The practitioner shall

furnish to the OED Director written consent to the

release of information and records relating to the

incapacity if requested by the OED Director.

(5) Learning in the law, examination. The

OED Director may direct that the practitioner

establish proof of competence and learning in law,

which proof may include passing the registration

examination.

(6) Granting of petition for transfer to active

status. The OED Director shall grant the petition

for transfer to active status upon a showing by clear

and convincing evidence that the incapacity has

been removed.

(7) Reinstatement in other jurisdiction. If a

practitioner is reciprocally transferred to disability

inactive status on the basis of a transfer to disability

inactive status in another jurisdiction, the OED

Director may dispense with further evidence that

the disability has been removed and may

immediately direct reinstatement to active status

upon such terms as are deemed proper and advisable.

(8) Judicial declaration of competency. If

a practitioner is transferred to disability inactive

status on the basis of a judicially declared

incompetence, judicially ordered involuntary

commitment on the grounds of incompetency or

disability, or court-ordered placement under

guardianship or conservatorship has been declared

to be competent, the OED Director may dispense

with further evidence that the incapacity to practice

law has been removed and may immediately direct

reinstatement to active status.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.30 - 11.31 [Reserved]

§ 11.32 Instituting a disciplinary proceeding.

If after conducting an investigation under § 11.22(a),

the OED Director is of the opinion that grounds

exist for discipline under § 11.19(b), the OED

Director, after complying where necessary with the

provisions of 5 U.S.C. 558(c), may convene a

meeting of a panel of the Committee on Discipline.

If convened, the panel of the Committee on

Discipline shall then determine as speciﬁed in §

11.23(b) whether there is probable cause to bring

disciplinary charges. If the panel of the Committee

on Discipline determines that probable cause exists

to bring charges, the OED Director may institute a

disciplinary proceeding by ﬁling a complaint under

§ 11.34.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; revised, 78 FR 20180, Apr. 3, 2013,

effective May 3, 2013]

§ 11.33 [Reserved]

§ 11.34 Complaint.

(a) A complaint instituting a disciplinary

proceeding shall:

R-344January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.30 - 11.31

(1) Name the person who is the subject of

the complaint who may then be referred to as the

"respondent";

(2) Give a plain and concise description of

the respondent’s alleged grounds for discipline;

(3) State the place and time, not less than

thirty days from the date the complaint is ﬁled, for

ﬁling an answer by the respondent;

(4) State that a decision by default may be

entered if an answer is not timely ﬁled by the

respondent; and

(5) Be signed by the OED Director.

(b) A complaint will be deemed sufﬁcient if it

fairly informs the respondent of any grounds for

discipline, and where applicable, the USPTO Rules

of Professional Conduct that form the basis for the

disciplinary proceeding so that the respondent is

able to adequately prepare a defense.

prescribed by the USPTO Director.

(d) Time for ﬁling a complaint. A complaint

shall be ﬁled within one year after the date on which

the OED Director receives a grievance forming the

basis of the complaint. No complaint shall be ﬁled

more than ten years after the date on which the

misconduct forming the basis for the proceeding

occurred.

(e) Tolling agreements. The one-year period

for ﬁling a complaint under paragraph (d) of this

section shall be tolled if the involved practitioner

and the OED Director agree in writing to such

tolling.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; paras. (d) and (e) added, 77 FR 45247,

July 31, 2012, effective August 30, 2012; para. (a)

introductory text and paras. (a)(1) and (b) revised, 78 FR

20180, Apr. 3, 2013, effective May 3, 2013]

§ 11.35 Service of complaint.

(a) A complaint may be served on a respondent

in any of the following methods:

(1) By delivering a copy of the complaint

personally to the respondent, in which case the

individual who gives the complaint to the respondent

shall ﬁle an afﬁdavit with the OED Director

indicating the time and place the complaint was

delivered to the respondent.

(2) By mailing a copy of the complaint by

Priority Mail Express®, ﬁrst-class mail, or any

delivery service that provides ability to conﬁrm

delivery or attempted delivery to:

(i) A respondent who is a registered

practitioner at the address provided to OED pursuant

to § 11.11, or

(ii) A respondent who is not registered

at the last address for the respondent known to the

OED Director.

(3) By any method mutually agreeable to the

OED Director and the respondent.

(4) In the case of a respondent who resides

outside the United States, by sending a copy of the

complaint by any delivery service that provides

ability to conﬁrm delivery or attempted delivery,

to:

(i) A respondent who is a registered

practitioner at the address provided to OED pursuant

to § 11.11; or

(ii) A respondent who is not registered

at the last address for the respondent known to the

OED Director.

(b) If a copy of the complaint cannot be

delivered to the respondent through any one of the

procedures in paragraph (a) of this section, the OED

Director shall serve the respondent by causing an

appropriate notice to be published in the Ofﬁcial

Gazette for two consecutive weeks, in which case,

the time for ﬁling an answer shall be thirty days

from the second publication of the notice. Failure

to timely ﬁle an answer will constitute an admission

of the allegations in the complaint in accordance

with paragraph (d) of § 11.36, and the hearing

ofﬁcer may enter an initial decision on default.

Director to be represented by an attorney under §

11.40(a), a copy of the complaint shall be served on

the attorney in lieu of service on the respondent in

the manner provided for in paragraph (a) or (b) of

this section.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; paras. (a)(2)(ii) and (a)(4)(ii) revised, 78

FR 20180, Apr. 3, 2013, effective May 3, 2013; para.

(a)(2) revised, 79 FR 63036, Oct. 22, 2014, effective Oct.

22, 2014]

January 2018R-345

§ 11.35CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 11.36 Answer to complaint.

(a) Time for answer. An answer to a complaint

shall be ﬁled within the time set in the complaint

but in no event shall that time be less than thirty

days from the date the complaint is ﬁled.

(b) With whom ﬁled. The answer shall be ﬁled

in writing with the hearing ofﬁcer at the address

speciﬁed in the complaint. The hearing ofﬁcer may

extend the time for ﬁling an answer once for a

period of no more than thirty days upon a showing

of good cause, provided a motion requesting an

extension of time is ﬁled within thirty days after the

date the complaint is served on respondent. A copy

of the answer, and any exhibits or attachments

thereto, shall be served on the OED Director.

the answer a statement of the facts that constitute

the grounds of defense and shall speciﬁcally admit

or deny each allegation set forth in the complaint.

The respondent shall not deny a material allegation

in the complaint that the respondent knows to be

true or state that respondent is without sufﬁcient

information to form a belief as to the truth of an

allegation, when in fact the respondent possesses

that information. The respondent shall also state

afﬁrmatively in the answer special matters of

defense and any intent to raise a disability as a

mitigating factor. If respondent intends to raise a

special matter of defense or disability, the answer

shall specify the defense or disability, its nexus to

the misconduct, and the reason it provides a defense

or mitigation. A respondent who fails to do so

cannot rely on a special matter of defense or

disability. The hearing ofﬁcer may, for good cause,

allow the respondent to ﬁle the statement late, grant

additional hearing preparation time, or make other

appropriate orders.

(d) Failure to deny allegations in complaint.

Every allegation in the complaint that is not denied

by a respondent in the answer shall be deemed to

be admitted and may be considered proven. The

hearing ofﬁcer at any hearing need receive no

further evidence with respect to that allegation.

(e) Default judgment. Failure to timely ﬁle an

answer will constitute an admission of the

allegations in the complaint and may result in entry

of default judgment.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.37 [Reserved]

§ 11.38 Contested case.

Upon the ﬁling of an answer by the respondent, a

disciplinary proceeding shall be regarded as a

contested case within the meaning of 35 U.S.C. 24.

Evidence obtained by a subpoena issued under 35

U.S.C. 24 shall not be admitted into the record or

considered unless leave to proceed under 35 U.S.C.

24 was previously authorized by the hearing ofﬁcer.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.39 Hearing ofﬁcer; appointment;

responsibilities; review of interlocutory

orders; stays.

(a) Appointment. A hearing ofﬁcer, appointed

by the USPTO Director under 5 U.S.C. 3105 or 35

U.S.C. 32, shall conduct disciplinary proceedings

as provided by this Part.

(b) Independence of the Hearing Ofﬁcer.

(1) A hearing ofﬁcer appointed in

accordance with paragraph (a) of this section shall

not be subject to ﬁrst level or second level

supervision by either the USPTO Director or OED

Director, or his or her designee.

(2) A hearing ofﬁcer appointed in

accordance with paragraph (a) of this section shall

not be subject to supervision of the person(s)

investigating or prosecuting the case.

(3) A hearing ofﬁcer appointed in

accordance with paragraph (a) of this section shall

be impartial, shall not be an individual who has

participated in any manner in the decision to initiate

the proceedings, and shall not have been employed

under the immediate supervision of the practitioner.

(4) A hearing ofﬁcer appointed in

accordance with paragraph (a) of this section shall

be admitted to practice law and have suitable

experience and training conducting hearings,

reaching a determination, and rendering an initial

decision in an equitable manner.

R-346January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.36

have authority, consistent with speciﬁc provisions

of these regulations, to:

(1) Administer oaths and afﬁrmations;

(2) Make rulings upon motions and other

requests;

(3) Rule upon offers of proof, receive

relevant evidence, and examine witnesses;

(4) Authorize the taking of a deposition of

a witness in lieu of personal appearance of the

witness before the hearing ofﬁcer;

(5) Determine the time and place of any

hearing and regulate its course and conduct;

(6) Hold or provide for the holding of

conferences to settle or simplify the issues;

(7) Receive and consider oral or written

arguments on facts or law;

(8) Adopt procedures and modify procedures

for the orderly disposition of proceedings;

(9) Make initial decisions under §§ 11.25

and 11.54; and

(10) Perform acts and take measures as

necessary to promote the efﬁcient, timely, and

impartial conduct of any disciplinary proceeding.

(d) Time for making initial decision. The

hearing ofﬁcer shall set times and exercise control

over a disciplinary proceeding such that an initial

decision under § 11.54 is normally issued within

nine months of the date a complaint is ﬁled. The

hearing ofﬁcer may, however, issue an initial

decision more than nine months after a complaint

is ﬁled if there exist circumstances, in his or her

opinion, that preclude issuance of an initial decision

within nine months of the ﬁling of the complaint.

(e) Review of interlocutory orders. The USPTO

Director will not review an interlocutory order of a

hearing ofﬁcer except:

(1) When the hearing ofﬁcer shall be of the

opinion:

(i) That the interlocutory order involves

a controlling question of procedure or law as to

which there is a substantial ground for a difference

of opinion, and

(ii) That an immediate decision by the

USPTO Director may materially advance the

ultimate termination of the disciplinary proceeding,

(2) In an extraordinary situation where the

USPTO Director deems that justice requires review.

(f) Stays pending review of interlocutory order.

If the OED Director or a respondent seeks review

of an interlocutory order of a hearing ofﬁcer under

paragraph (b)(2) of this section, any time period set

by the hearing ofﬁcer for taking action shall not be

stayed unless ordered by the USPTO Director or the

hearing ofﬁcer.

(g) The hearing ofﬁcer shall engage in no ex

parte discussions with any party on the merits of

the complaint, beginning with appointment and

ending when the ﬁnal agency decision is issued.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.40 Representative for OED Director or

respondent.

(a) A respondent may represent himself or

herself, or be represented by an attorney before the

Ofﬁce in connection with an investigation or

disciplinary proceeding. The attorney shall ﬁle a

written declaration that he or she is an attorney

within the meaning of § 11.1 and shall state:

(1) The address to which the attorney wants

correspondence related to the investigation or

disciplinary proceeding sent, and

(2) A telephone number where the attorney

may be reached during normal business hours.

(b) The Deputy General Counsel for Intellectual

Property and Solicitor, and attorneys in the Ofﬁce

of the Solicitor shall represent the OED Director.

The attorneys representing the OED Director in

disciplinary proceedings shall not consult with the

USPTO Director, the General Counsel, the Deputy

General Counsel for General Law, or an individual

designated by the USPTO Director to decide

disciplinary matters regarding the proceeding. The

General Counsel and the Deputy General Counsel

for General Law shall remain screened from the

investigation and prosecution of all disciplinary

proceedings in order that they shall be available as

counsel to the USPTO Director in deciding

disciplinary proceedings unless access is appropriate

to perform their duties. After a ﬁnal decision is

January 2018R-347

§ 11.40CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

entered in a disciplinary proceeding, the OED

Director and attorneys representing the OED

Director shall be available to counsel the USPTO

Director, the General Counsel, and the Deputy

General Counsel for General Law in any further

proceedings.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.41 Filing of papers.

(a) The provisions of §§ 1.8 and 2.197 of this

subchapter do not apply to disciplinary proceedings.

All papers ﬁled after the complaint and prior to entry

of an initial decision by the hearing ofﬁcer shall be

ﬁled with the hearing ofﬁcer at an address or place

designated by the hearing ofﬁcer.

(b) All papers ﬁled after entry of an initial

decision by the hearing ofﬁcer shall be ﬁled with

the USPTO Director. A copy of the paper shall be

served on the OED Director. The hearing ofﬁcer or

the OED Director may provide for ﬁling papers and

other matters by hand, by Priority Mail Express®,

or by other means.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; para. (b) revised, 79 FR 63036, Oct. 22,

2014, effective Oct. 22, 2014]

§ 11.42 Service of papers.

(a) All papers other than a complaint shall be

served on a respondent who is represented by an

attorney by:

(1) Delivering a copy of the paper to the

ofﬁce of the attorney; or

(2) Mailing a copy of the paper by ﬁrst-class

mail, Priority Mail Express®, or other delivery

service to the attorney at the address provided by

the attorney under § 11.40(a)(1); or

(3) Any other method mutually agreeable to

the attorney and a representative for the OED

Director.

(b) All papers other than a complaint shall be

served on a respondent who is not represented by

an attorney by:

(1) Delivering a copy of the paper to the

respondent; or

(2) Mailing a copy of the paper by ﬁrst-class

mail, Priority Mail Express®, or other delivery

service to the respondent at the address to which a

complaint may be served or such other address as

may be designated in writing by the respondent; or

(3) Any other method mutually agreeable to

the respondent and a representative of the OED

Director.

representative for the OED Director one copy of

each paper ﬁled with the hearing ofﬁcer or the OED

Director. A paper may be served on the

representative for the OED Director by:

(1) Delivering a copy of the paper to the

representative; or

(2) Mailing a copy of the paper by ﬁrst-class

mail, Priority Mail Express®, or other delivery

service to an address designated in writing by the

representative; or

(3) Any other method mutually agreeable to

the respondent and the representative.

(d) Each paper ﬁled in a disciplinary proceeding

shall contain therein a certiﬁcate of service

indicating:

(1) The date on which service was made;

and

(2) The method by which service was made.

(e) The hearing ofﬁcer or the USPTO Director

may require that a paper be served by hand or by

Priority Mail Express®.

(f) Service by mail is completed when the paper

mailed in the United States is placed into the custody

of the U.S. Postal Service.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; revised, 79 FR 63036, Oct. 22, 2014,

effective Oct. 22, 2014]

§ 11.43 Motions.

Motions, including all prehearing motions

commonly ﬁled under the Federal Rules of Civil

Procedure, shall be ﬁled with the hearing ofﬁcer.

The hearing ofﬁcer will determine whether replies

to responses will be authorized and the time period

for ﬁling such a response. No motion shall be ﬁled

R-348January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.41

with the hearing ofﬁcer unless such motion is

supported by a written statement by the moving

party that the moving party or attorney for the

moving party has conferred with the opposing party

or attorney for the opposing party in an effort in

good faith to resolve by agreement the issues raised

by the motion and has been unable to reach

agreement. If, prior to a decision on the motion, the

parties resolve issues raised by a motion presented

to the hearing ofﬁcer, the parties shall promptly

notify the hearing ofﬁcer.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.44 Hearings.

(a) The hearing ofﬁcer shall preside over

hearings in disciplinary proceedings. The hearing

ofﬁcer shall set the time and place for the hearing.

In cases involving an incarcerated respondent, any

necessary oral hearing may be held at the location

of incarceration. Oral hearings will be

stenographically recorded and transcribed, and the

testimony of witnesses will be received under oath

or afﬁrmation. The hearing ofﬁcer shall conduct the

hearing as if the proceeding were subject to 5 U.S.C.

556. A copy of the transcript of the hearing shall

become part of the record. A copy of the transcript

shall be provided to the OED Director and the

respondent at the expense of the Ofﬁce.

(b) If the respondent to a disciplinary proceeding

fails to appear at the hearing after a notice of hearing

has been given by the hearing ofﬁcer, the hearing

ofﬁcer may deem the respondent to have waived

the right to a hearing and may proceed with the

hearing in the absence of the respondent.

to the public except that the hearing ofﬁcer may

grant a request by a respondent to open his or her

hearing to the public and make the record of the

disciplinary proceeding available for public

inspection, provided, a protective order is entered

to exclude from public disclosure information which

is privileged or conﬁdential under applicable laws

or regulations.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.45 Amendment of pleadings.

The OED Director may, without Committee on

Discipline authorization, but with the authorization

of the hearing ofﬁcer, amend the complaint to

include additional charges based upon conduct

committed before or after the complaint was ﬁled.

If amendment of the complaint is authorized, the

hearing ofﬁcer shall authorize amendment of the

answer. Any party who would otherwise be

prejudiced by the amendment will be given

reasonable opportunity to meet the allegations in

the complaint or answer as amended, and the hearing

ofﬁcer shall make ﬁndings on any issue presented

by the complaint or answer as amended.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.46 - 11.48 [Reserved]

§ 11.49 Burden of proof.

In a disciplinary proceeding, the OED Director shall

have the burden of proving the violation by clear

and convincing evidence and a respondent shall

have the burden of proving any afﬁrmative defense

by clear and convincing evidence.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.50 Evidence.

(a) Rules of evidence. The rules of evidence

prevailing in courts of law and equity are not

controlling in hearings in disciplinary proceedings.

However, the hearing ofﬁcer shall exclude evidence

that is irrelevant, immaterial, or unduly repetitious.

(b) Depositions. Depositions of witnesses taken

pursuant to § 11.51 may be admitted as evidence.

records, and papers of the Ofﬁce, including, but not

limited to, all papers in the ﬁle of a disciplinary

investigation, are admissible without extrinsic

evidence of authenticity. These documents, records,

and papers may be evidenced by a copy certiﬁed as

correct by an employee of the Ofﬁce.

January 2018R-349

§ 11.50CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(d) Exhibits. If any document, record, or other

paper is introduced in evidence as an exhibit, the

hearing ofﬁcer may authorize the withdrawal of the

exhibit subject to any conditions the hearing ofﬁcer

deems appropriate.

(e) Objections. Objections to evidence will be

in short form, stating the grounds of objection.

Objections and rulings on objections will be a part

of the record. No exception to the ruling is necessary

to preserve the rights of the parties.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.51 Depositions.

(a) Depositions for use at the hearing in lieu of

personal appearance of a witness before the hearing

ofﬁcer may be taken by respondent or the OED

Director upon a showing of good cause and with

the approval of, and under such conditions as may

be deemed appropriate by, the hearing ofﬁcer.

Depositions may be taken upon oral or written

questions, upon not less than ten days’ written notice

to the other party, before any ofﬁcer authorized to

administer an oath or afﬁrmation in the place where

the deposition is to be taken. The parties may waive

the requirement of ten days’ notice and depositions

may then be taken of a witness at a time and place

mutually agreed to by the parties. When a deposition

is taken upon written questions, copies of the written

questions will be served upon the other party with

the notice, and copies of any written cross-questions

will be served by hand or Priority Mail Express®

not less than ﬁve days before the date of the taking

of the deposition unless the parties mutually agree

otherwise. A party on whose behalf a deposition is

taken shall ﬁle a copy of a transcript of the

deposition signed by a court reporter with the

hearing ofﬁcer and shall serve one copy upon the

opposing party. Expenses for a court reporter and

preparing, serving, and ﬁling depositions shall be

borne by the party at whose instance the deposition

is taken. Depositions may not be taken to obtain

discovery, except as provided for in paragraph (b)

of this section.

(b) When the OED Director and the respondent

agree in writing, a deposition of any witness who

will appear voluntarily may be taken under such

terms and conditions as may be mutually agreeable

to the OED Director and the respondent. The

deposition shall not be ﬁled with the hearing ofﬁcer

and may not be admitted in evidence before the

hearing ofﬁcer unless he or she orders the deposition

admitted in evidence. The admissibility of the

deposition shall lie within the discretion of the

hearing ofﬁcer who may reject the deposition on

any reasonable basis including the fact that

demeanor is involved and that the witness should

have been called to appear personally before the

hearing ofﬁcer.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; para. (a) revised, 79 FR 63036, Oct. 22,

2014, effective Oct. 22, 2014]

§ 11.52 Discovery.

Discovery shall not be authorized except as follows:

(a) After an answer is ﬁled under § 11.36 and

when a party establishes that discovery is reasonable

and relevant, the hearing ofﬁcer, under such

conditions as he or she deems appropriate, may order

an opposing party to:

(1) Answer a reasonable number of written

requests for admission or interrogatories;

(2) Produce for inspection and copying a

reasonable number of documents; and

(3) Produce for inspection a reasonable

number of things other than documents.

(b) Discovery shall not be authorized under

paragraph (a) of this section of any matter which:

(1) Will be used by another party solely for

impeachment;

(2) Is not available to the party under 35

U.S.C. 122;

(3) Relates to any other disciplinary

proceeding;

(4) Relates to experts except as the hearing

ofﬁcer may require under paragraph (e) of this

section;

(5) Is privileged; or

(6) Relates to mental impressions,

conclusions, opinions, or legal theories of any

attorney or other representative of a party.

requested under paragraph (a) of this section if the

discovery sought:

R-350January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.51

(1) Will unduly delay the disciplinary

proceeding;

(2) Will place an undue burden on the party

required to produce the discovery sought; or

(3) Consists of information that is available:

(i) Generally to the public;

(ii) Equally to the parties; or

(iii) To the party seeking the discovery

through another source.

(d) Prior to authorizing discovery under

paragraph (a) of this section, the hearing ofﬁcer

shall require the party seeking discovery to ﬁle a

motion (§ 11.43) and explain in detail, for each

request made, how the discovery sought is

reasonable and relevant to an issue actually raised

in the complaint or the answer.

(e) The hearing ofﬁcer may require parties to

ﬁle and serve, prior to any hearing, a pre-hearing

statement that contains:

(1) A list (together with a copy) of all

proposed exhibits to be used in connection with a

party’s case-in-chief;

(2) A list of proposed witnesses;

(3) As to each proposed expert witness:

(i) An identiﬁcation of the ﬁeld in which

the individual will be qualiﬁed as an expert;

(ii) A statement as to the subject matter

on which the expert is expected to testify; and

(iii) A statement of the substance of the

facts and opinions to which the expert is expected

to testify;

(4) Copies of memoranda reﬂecting

respondent’s own statements to administrative

representatives.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.53 Proposed ﬁndings and conclusions;

post-hearing memorandum.

Except in cases in which the respondent has failed

to answer the complaint or amended complaint, the

hearing ofﬁcer, prior to making an initial decision,

shall afford the parties a reasonable opportunity to

submit proposed ﬁndings and conclusions and a

post-hearing memorandum in support of the

proposed ﬁndings and conclusions.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.54 Initial decision of hearing ofﬁcer.

(a) The hearing ofﬁcer shall make an initial

decision in the case. The decision will include:

(1) A statement of ﬁndings of fact and

conclusions of law, as well as the reasons or bases

for those ﬁndings and conclusions with appropriate

references to the record, upon all the material issues

of fact, law, or discretion presented on the record,

and

(2) An order of default judgment, of

suspension or exclusion from practice, of reprimand,

of probation or an order dismissing the complaint.

The order also may impose any conditions deemed

appropriate under the circumstances. The hearing

ofﬁcer shall transmit a copy of the decision to the

OED Director and to the respondent. After issuing

the decision, the hearing ofﬁcer shall transmit the

entire record to the OED Director. In the absence

of an appeal to the USPTO Director, the decision

of the hearing ofﬁcer, including a default judgment,

will, without further proceedings, become the

decision of the USPTO Director thirty days from

the date of the decision of the hearing ofﬁcer.

(b) The initial decision of the hearing ofﬁcer

shall explain the reason for any default judgment,

reprimand, suspension, exclusion, or probation, and

shall explain any conditions imposed with discipline.

In determining any sanction, the following four

factors must be considered if they are applicable:

(1) Whether the practitioner has violated a

duty owed to a client, to the public, to the legal

system, or to the profession;

(2) Whether the practitioner acted

intentionally, knowingly, or negligently;

(3) The amount of the actual or potential

injury caused by the practitioner’s misconduct; and

(4) The existence of any aggravating or

mitigating factors.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; para. (a)(2) and para. (b) introductory

January 2018R-351

§ 11.54CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

text revised, 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.55 Appeal to the USPTO Director.

(a) Within thirty days after the date of the initial

decision of the hearing ofﬁcer under §§ 11.25 or

11.54, either party may appeal to the USPTO

Director. The appeal shall include the appellant’s

brief. If more than one appeal is ﬁled, the party who

ﬁles the appeal ﬁrst is the appellant for purpose of

this rule. If appeals are ﬁled on the same day, the

respondent is the appellant. If an appeal is ﬁled, then

the OED Director shall transmit the entire record to

the USPTO Director. Any cross-appeal shall be ﬁled

within fourteen days after the date of service of the

appeal pursuant to § 11.42, or thirty days after the

date of the initial decision of the hearing ofﬁcer,

whichever is later. The cross-appeal shall include

the cross-appellant’s brief. Any appellee or

cross-appellee brief must be ﬁled within thirty days

after the date of service pursuant to § 11.42 of an

appeal or cross-appeal. Any reply brief must be ﬁled

within fourteen days after the date of service of any

appellee or cross-appellee brief.

(b) An appeal or cross-appeal must include

exceptions to the decisions of the hearing ofﬁcer

and supporting reasons for those exceptions. Any

exception not raised will be deemed to have been

waived and will be disregarded by the USPTO

Director in reviewing the initial decision.

(1) Be ﬁled with the USPTO Director at the

address set forth in § 1.1(a)(3)(ii) of this subchapter

and served on the opposing party;

(2) Include separate sections containing a

concise statement of the disputed facts and disputed

points of law; and

(3) Be typed on 8 1/2 by 11-inch paper, and

comply with Rule 32(a)(4)-(6) of the Federal Rules

of Appellate Procedure.

(d) An appellant’s, cross-appellant’s, appellee’s,

and cross-appellee’s brief shall be no more than

thirty pages in length, and comply with Rule

28(a)(2), (3), and (5) through (10) of the Federal

Rules of Appellate Procedure. Any reply brief shall

be no more than ﬁfteen pages in length, and shall

comply with Rule 28 (a)(2), (3), (8), and (9) of the

Federal Rules of Appellate Procedure.

(e) The USPTO Director may refuse entry of a

nonconforming brief.

(f) The USPTO Director will decide the appeal

on the record made before the hearing ofﬁcer.

(g) Unless the USPTO Director permits, no

further briefs or motions shall be ﬁled.

(h) The USPTO Director may order reopening

of a disciplinary proceeding in accordance with the

principles that govern the granting of new trials.

Any request to reopen a disciplinary proceeding on

the basis of newly discovered evidence must

demonstrate that the newly discovered evidence

could not have been discovered by due diligence.

(i) In the absence of an appeal by the OED

Director, failure by the respondent to appeal under

the provisions of this section shall result in the initial

decision being ﬁnal and effective thirty days from

the date of the initial decision of the hearing ofﬁcer.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.56 Decision of the USPTO Director.

(a) The USPTO Director shall decide an appeal

from an initial decision of the hearing ofﬁcer. On

appeal from the initial decision, the USPTO Director

has authority to conduct a de novo review of the

factual record. The USPTO Director may afﬁrm,

reverse, or modify the initial decision or remand the

matter to the hearing ofﬁcer for such further

proceedings as the USPTO Director may deem

appropriate. In making a ﬁnal decision, the USPTO

Director shall review the record or the portions of

the record designated by the parties. The USPTO

Director shall transmit a copy of the ﬁnal decision

to the OED Director and to the respondent.

(b) A ﬁnal decision of the USPTO Director may

dismiss a disciplinary proceeding, reverse or modify

the initial decision, reprimand a practitioner, or may

suspend or exclude the practitioner from practice

before the Ofﬁce. A ﬁnal decision suspending or

excluding a practitioner shall require compliance

with the provisions of § 11.58. The ﬁnal decision

may also condition the reinstatement of the

practitioner upon a showing that the practitioner has

taken steps to correct or mitigate the matter forming

the basis of the action, or to prevent recurrence of

the same or similar conduct.

R-352January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.55

make a single request for reconsideration or

modiﬁcation of the decision by the USPTO Director

if ﬁled within twenty days from the date of entry of

the decision. No request for reconsideration or

modiﬁcation shall be granted unless the request is

based on newly discovered evidence or error of law

or fact, and the requestor must demonstrate that any

newly discovered evidence could not have been

discovered any earlier by due diligence. Such a

request shall have the effect of staying the effective

date of the order of discipline in the ﬁnal decision.

The decision by the USPTO Director is effective on

its date of entry.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.57 Review of ﬁnal decision of the

USPTO Director.

(a) Review of the ﬁnal decision by the USPTO

Director in a disciplinary case may be had, subject

to § 11.55(d), by a petition ﬁled in accordance with

35 U.S.C. 32. The Respondent must serve the

USPTO Director with the petition. Respondent must

serve the petition in accordance with Rule 4 of the

Federal Rules of Civil Procedure and § 104.2 of this

Title.

(b) Except as provided for in § 11.56(c), an

order for discipline in a ﬁnal decision will not be

stayed except on proof of exceptional circumstances.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.58 Duties of disciplined or resigned

practitioner, or practitioner on disability

inactive status.

(a) An excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status shall not engage in any practice of

patent, trademark and other non-patent law before

the Ofﬁce. An excluded, suspended or resigned

practitioner will not be automatically reinstated at

the end of his or her period of exclusion or

suspension. An excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status must comply with the provisions of

this section and § 11.60 to be reinstated. Failure to

comply with the provisions of this section may

constitute both grounds for denying reinstatement

or readmission; and cause for further action,

including seeking further exclusion, suspension, and

for revocation of any pending probation.

(b) Unless otherwise ordered by the USPTO

Director, any excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status shall:

(1) Within thirty days after the date of entry

of the order of exclusion, suspension, acceptance of

resignation, or transfer to disability inactive status:

(i) File a notice of withdrawal as of the

effective date of the exclusion, suspension,

acceptance of resignation, or transfer to disability

inactive status in each pending patent and trademark

application, each pending reexamination and

interference or trial proceeding, and every other

matter pending in the Ofﬁce, together with a copy

of the notices sent pursuant to paragraphs (b) and

(ii) Provide notice to all State and Federal

jurisdictions and administrative agencies to which

the practitioner is admitted to practice and all clients

the practitioner represents having immediate or

prospective business before the Ofﬁce in patent,

trademark and other non-patent matters of the order

of exclusion, suspension, acceptance of resignation,

or transferred to disability inactive status and of the

practitioner’s consequent inability to act as a

practitioner after the effective date of the order; and

that, if not represented by another practitioner, the

client should act promptly to substitute another

practitioner, or to seek legal advice elsewhere,

calling attention to any urgency arising from the

circumstances of the case;

(iii) Provide notice to the practitioner(s)

for all opposing parties (or, to the parties in the

absence of a practitioner representing the parties)

in matters pending before the Ofﬁce of the

practitioner’s exclusion, suspension, resignation, or

transfer to disability inactive status and, that as a

consequence, the practitioner is disqualiﬁed from

acting as a practitioner regarding matters before the

Ofﬁce after the effective date of the suspension,

exclusion, resignation or transfer to disability

inactive status, and state in the notice the mailing

address of each client of the excluded, suspended

or resigned practitioner, or practitioner transferred

January 2018R-353

§ 11.58CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

to disability inactive status who is a party in the

pending matter;

(iv) Deliver to all clients having

immediate or prospective business before the Ofﬁce

in patent, trademark or other non-patent matters any

papers or other property to which the clients are

entitled, or shall notify the clients and any

co-practitioner of a suitable time and place where

the papers and other property may be obtained,

calling attention to any urgency for obtaining the

papers or other property;

(v) Relinquish to the client, or other

practitioner designated by the client, all funds for

practice before the Ofﬁce, including any legal fees

paid in advance that have not been earned and any

advanced costs not expended;

(vi) Take any necessary and appropriate

steps to remove from any telephone, legal, or other

directory any advertisement, statement, or

representation which would reasonably suggest that

the practitioner is authorized to practice patent,

trademark, or other non-patent law before the Ofﬁce;

and

(vii) Serve all notices required by

paragraphs (b)(1)(ii) and (b)(1)(iii) of this section

by certiﬁed mail, return receipt requested, unless

mailed abroad. If mailed abroad, all notices shall be

served with a receipt to be signed and returned to

the practitioner.

(2) Within forty-ﬁve days after entry of the

order of suspension, exclusion, or of acceptance of

resignation, the practitioner shall ﬁle with the OED

Director an afﬁdavit of compliance certifying that

the practitioner has fully complied with the

provisions of the order, this section, and with §

11.116 for withdrawal from representation.

Appended to the afﬁdavit of compliance shall be:

(i) A copy of each form of notice, the

names and addresses of the clients, practitioners,

courts, and agencies to which notices were sent, and

all return receipts or returned mail received up to

the date of the afﬁdavit. Supplemental afﬁdavits

shall be ﬁled covering subsequent return receipts

and returned mail. Such names and addresses of

clients shall remain conﬁdential unless otherwise

ordered by the USPTO Director;

(ii) A schedule showing the location, title

and account number of every bank account

designated as a client or trust account, deposit

account in the Ofﬁce, or other ﬁduciary account,

and of every account in which the practitioner holds

or held as of the entry date of the order any client,

trust, or ﬁduciary funds for practice before the

Ofﬁce;

(iii) A schedule describing the

practitioner’s disposition of all client and ﬁduciary

funds for practice before the Ofﬁce in the

practitioner’s possession, custody or control as of

the date of the order or thereafter;

(iv) Such proof of the proper distribution

of said funds and the closing of such accounts as

has been requested by the OED Director, including

copies of checks and other instruments;

(v) A list of all other State, Federal, and

administrative jurisdictions to which the practitioner

is admitted to practice; and

(vi) An afﬁdavit describing the precise

nature of the steps taken to remove from any

telephone, legal, or other directory any

advertisement, statement, or representation which

would reasonably suggest that the practitioner is

authorized to practice patent, trademark, or other

non-patent law before the Ofﬁce. The afﬁdavit shall

also state the residence or other address of the

practitioner to which communications may thereafter

be directed, and list all State and Federal

jurisdictions, and administrative agencies to which

the practitioner is admitted to practice. The OED

Director may require such additional proof as is

deemed necessary. In addition, for the period of

discipline, an excluded or suspended practitioner,

or a practitioner transferred to disability inactive

status shall continue to ﬁle a statement in accordance

with § 11.11, regarding any change of residence or

other address to which communications may

thereafter be directed, so that the excluded or

suspended practitioner, or practitioner transferred

to disability inactive status may be located if a

grievance is received regarding any conduct

occurring before or after the exclusion or

suspension. The practitioner shall retain copies of

all notices sent and shall maintain complete records

of the steps taken to comply with the notice

requirements.

(3) Not hold himself or herself out as

authorized to practice law before the Ofﬁce.

R-354January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.58

(4) Not advertise the practitioner’s

availability or ability to perform or render legal

services for any person having immediate or

prospective business before the Ofﬁce as to that

business.

(5) Not render legal advice or services to

any person having immediate or prospective

business before the Ofﬁce as to that business.

(6) Promptly take steps to change any sign

identifying the practitioner’s or the practitioner’s

ﬁrm’s ofﬁce and the practitioner’s or the

practitioner’s ﬁrm’s stationery to delete therefrom

any advertisement, statement, or representation

which would reasonably suggest that the practitioner

is authorized to practice law before the Ofﬁce.

practitioner, or practitioner transferred to disability

inactive status after entry of the order of exclusion

or suspension, acceptance of resignation, or transfer

to disability inactive status shall not accept any new

retainer regarding immediate or prospective business

before the Ofﬁce, or engage as a practitioner for

another in any new case or legal matter regarding

practice before the Ofﬁce. The excluded, suspended

or resigned practitioner, or practitioner transferred

to disability inactive status shall be granted limited

recognition for a period of thirty days. During the

thirty-day period of limited recognition, the

excluded, suspended or resigned practitioner, or

practitioner transferred to disability inactive status

shall conclude work on behalf of a client on any

matters that were pending before the Ofﬁce on the

date of entry of the order of exclusion or suspension,

or acceptance of resignation. If such work cannot

be concluded, the excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status shall so advise the client so that the

client may make other arrangements.

(d) Required records. An excluded, suspended

or resigned practitioner, or practitioner transferred

to disability inactive status shall keep and maintain

records of the various steps taken under this section,

so that in any subsequent proceeding proof of

compliance with this section and with the exclusion

or suspension order will be available. The OED

Director will require the practitioner to submit such

proof as a condition precedent to the granting of any

petition for reinstatement.

(e) An excluded, suspended or resigned

practitioner, or practitioner on disability inactive

status who aids another practitioner in any way in

the other practitioner’s practice of law before the

Ofﬁce, may, under the direct supervision of the other

practitioner, act as a paralegal for the other

practitioner or perform other services for the other

practitioner which are normally performed by

laypersons, provided:

(1) The excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status is a salaried employee of:

(i) The other practitioner;

(ii) The other practitioner’s law ﬁrm; or

(iii) A client-employer who employs the

other practitioner as a salaried employee;

(2) The other practitioner assumes full

professional responsibility to any client and the

Ofﬁce for any work performed by the excluded,

suspended or resigned practitioner for the other

practitioner;

(3) The excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status does not:

(i) Communicate directly in writing,

orally, or otherwise with a client of the other

practitioner in regard to any immediate or

prospective business before the Ofﬁce;

(ii) Render any legal advice or any legal

services to a client of the other practitioner in regard

to any immediate or prospective business before the

Ofﬁce; or

(iii) Meet in person or in the presence of

the other practitioner in regard to any immediate or

prospective business before the Ofﬁce, with:

(A) Any Ofﬁce employee in

connection with the prosecution of any patent,

trademark, or other case;

(B) Any client of the other

practitioner, the other practitioner’s law ﬁrm, or the

client-employer of the other practitioner; or

whom the other practitioner, the other practitioner’s

law ﬁrm, or the other practitioner’s client-employer

may or intends to call as a witness in any proceeding

before the Ofﬁce. The term “witness” includes

January 2018R-355

§ 11.58CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

individuals who will testify orally in a proceeding

before, or sign an afﬁdavit or any other document

to be ﬁled in, the Ofﬁce.

(f) When an excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status acts as a paralegal or performs

services under paragraph (e) of this section, the

practitioner shall not thereafter be reinstated to

practice before the Ofﬁce unless:

(1) The practitioner shall have ﬁled with the

OED Director an afﬁdavit which:

(i) Explains in detail the precise nature

of all paralegal or other services performed by the

excluded, suspended or resigned practitioner, or

practitioner transferred to disability inactive status,

and

(ii) Shows by clear and convincing

evidence that the excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status has complied with the provisions of

this section and all USPTO Rules of Professional

Conduct; and

(2) The other practitioner shall have ﬁled

with the OED Director a written statement which:

(i) Shows that the other practitioner has

read the afﬁdavit required by paragraph (d)(1) of

this section and that the other practitioner believes

every statement in the afﬁdavit to be true, and

(ii) States why the other practitioner

believes that the excluded, suspended or resigned

practitioner, or practitioner transferred to disability

inactive status has complied with paragraph (c) of

this section.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008; para. (b)(1)(i) revised, 77 FR 46615, Aug.

6, 2012, effective Sept. 16, 2012; para. (b)(2) introductory

text and para. (f)(1)(ii) revised, 78 FR 20180, Apr. 3,

2013, effective May 3, 2013]

§ 11.59 Dissemination of disciplinary and

other information.

(a) The OED Director shall inform the public

of the disposition of each matter in which public

discipline has been imposed, and of any other

changes in a practitioner’s registration status. Public

discipline includes exclusion, as well as exclusion

on consent; suspension; and public reprimand.

Unless otherwise ordered by the USPTO Director,

the OED Director shall give notice of public

discipline and the reasons for the discipline to

disciplinary enforcement agencies in the State where

the practitioner is admitted to practice, to courts

where the practitioner is known to be admitted, and

the public. If public discipline is imposed, the OED

Director shall cause a ﬁnal decision of the USPTO

Director to be published. Final decisions of the

USPTO Director include default judgments. See §

11.54(a)(2). If a private reprimand is imposed, the

OED Director shall cause a redacted version of the

ﬁnal decision to be published.

(b) Records available to the public. Unless the

USPTO Director orders that the proceeding or a

portion of the record be kept conﬁdential, the OED

Director’s records of every disciplinary proceeding

where a practitioner is reprimanded, suspended, or

excluded, including when said sanction is imposed

by default judgment, shall be made available to the

public upon written request, except that information

may be withheld as necessary to protect the privacy

of third parties or as directed in a protective order

issued pursuant to § 11.44(c). The record of a

proceeding that results in a practitioner’s transfer

to disability inactive status shall not be available to

the public.

Unless the USPTO Director orders that the

proceeding or a portion of the record be kept

conﬁdential, an order excluding a practitioner on

consent under § 11.27 and the afﬁdavit required

under paragraph (a) of § 11.27 shall be available to

the public, except that information in the order or

afﬁdavit may be withheld as necessary to protect

the privacy of third parties or as directed in a

protective order under § 11.44(c). The afﬁdavit

required under paragraph (a) of § 11.27 shall not be

used in any other proceeding except by order of the

USPTO Director or upon written consent of the

practitioner.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.60 Petition for reinstatement.

(a) Restrictions on reinstatement. An excluded,

suspended or resigned practitioner shall not resume

practice of patent, trademark, or other non-patent

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.59

law before the Ofﬁce until reinstated by order of

the OED Director or the USPTO Director.

(b) Petition for reinstatement. An excluded or

suspended practitioner shall be eligible to apply for

reinstatement only upon expiration of the period of

suspension or exclusion and the practitioner’s full

compliance with § 11.58. An excluded practitioner

shall be eligible to apply for reinstatement no earlier

than at least ﬁve years from the effective date of the

exclusion. A resigned practitioner shall be eligible

to petition for reinstatement and must show

compliance with § 11.58 no earlier than at least ﬁve

years from the date the practitioner’s resignation is

accepted and an order is entered excluding the

practitioner on consent.

excluded, suspended or resigned practitioner shall

ﬁle a petition for reinstatement accompanied by the

fee required by § 1.21(a)(10) of this subchapter. The

petition for reinstatement shall be ﬁled with the

OED Director. An excluded or suspended

practitioner who has violated any provision of §

11.58 shall not be eligible for reinstatement until a

continuous period of the time in compliance with §

11.58 that is equal to the period of suspension or

exclusion has elapsed. A resigned practitioner shall

not be eligible for reinstatement until compliance

with § 11.58 is shown. If the excluded, suspended

or resigned practitioner is not eligible for

reinstatement, or if the OED Director determines

that the petition is insufﬁcient or defective on its

face, the OED Director may dismiss the petition.

Otherwise the OED Director shall consider the

petition for reinstatement. The excluded, suspended

or resigned practitioner seeking reinstatement shall

have the burden of proof by clear and convincing

evidence. Such proof shall be included in or

accompany the petition, and shall establish:

(1) That the excluded, suspended or resigned

practitioner has the good moral character and

reputation, competency, and learning in law required

under § 11.7 for admission;

(2) That the resumption of practice before

the Ofﬁce will not be detrimental to the

administration of justice or subversive to the public

interest; and

(3) That the suspended practitioner has

complied with the provisions of § 11.58 for the full

period of suspension, that the excluded practitioner

has complied with the provisions of § 11.58 for at

least ﬁve continuous years, or that the resigned

practitioner has complied with § 11.58 upon

acceptance of the resignation.

(d) Petitions for reinstatement — Action by

the OED Director granting reinstatement. (1) If the

excluded, suspended or resigned practitioner is

found to have complied with paragraphs(c)(1)

through (c)(3) of this section, the OED Director

shall enter an order of reinstatement, which shall be

conditioned on payment of the costs of the

disciplinary proceeding to the extent set forth in

paragraphs (d)(2) and (3) of this section.

(2) Payment of costs of disciplinary

proceedings. Prior to reinstatement to practice, the

excluded or suspended practitioner shall pay the

costs of the disciplinary proceeding. The costs

imposed pursuant to this section include all of the

following:

(i) The actual expense incurred by the

OED Director or the Ofﬁce for the original and

copies of any reporter’s transcripts of the

disciplinary proceeding, and any fee paid for the

services of the reporter;

(ii) All expenses paid by the OED

Director or the Ofﬁce which would qualify as

taxable costs recoverable in civil proceedings; and

(iii) The charges determined by the OED

Director to be “reasonable costs” of investigation,

hearing, and review. These amounts shall serve to

defray the costs, other than fees for services of

attorneys and experts, of the Ofﬁce of Enrollment

and Discipline in the preparation or hearing of the

disciplinary proceeding, and costs incurred in the

administrative processing of the disciplinary

proceeding.

(3) An excluded or suspended

practitioner may be granted relief, in whole or in

part, only from an order assessing costs under this

section or may be granted an extension of time to

pay these costs, in the discretion of the OED

Director, upon grounds of hardship, special

circumstances, or other good cause.

(e) Petitions for reinstatement — Action by the

OED Director denying reinstatement. If the

excluded, suspended or resigned practitioner is

found unﬁt to resume the practice of patent law

before the Ofﬁce, the OED Director shall ﬁrst

January 2018R-357

§ 11.60CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

provide the excluded, suspended or resigned

practitioner with an opportunity to show cause in

writing why the petition should not be denied.

Failure to comply with § 11.12(c) shall constitute

unﬁtness. If unpersuaded by the showing, the OED

Director shall deny the petition. The OED Director

may require the excluded, suspended or resigned

practitioner, in meeting the requirements of § 11.7,

to take and pass an examination under § 11.7(b),

ethics courses, and/or the Multistate Professional

Responsibility Examination. The OED Director shall

provide ﬁndings, together with the record. The

ﬁndings shall include on the ﬁrst page, immediately

beneath the caption of the case, a separate section

entitled “Prior Proceedings” which shall state the

docket number of the original disciplinary

proceeding in which the exclusion or suspension

was ordered.

(f) Resubmission of petitions for reinstatement.

If a petition for reinstatement is denied, no further

petition for reinstatement may be ﬁled until the

expiration of at least one year following the denial

unless the order of denial provides otherwise.

(g) Reinstatement proceedings open to public.

Proceedings on any petition for reinstatement shall

be open to the public. Before reinstating any

excluded or suspended practitioner, the OED

Director shall publish a notice of the excluded or

suspended practitioner’s petition for reinstatement

and shall permit the public a reasonable opportunity

to comment or submit evidence with respect to the

petition for reinstatement.

[Added, 73 FR 47650, Aug. 14, 2008, effective

Sept. 15, 2008]

§ 11.61 [Reserved]

[Removed and reserved, 78 FR 20180, Apr. 3,

2013, effective May 3, 2013]

§ 11.62 -11.99 [Reserved]

Subpart D — USPTO Rules of Professional

Conduct

§ 11.100 [Reserved]

CLIENT-PRACTITIONER

RELATIONSHIP

§ 11.101 Competence.

A practitioner shall provide competent

representation to a client. Competent representation

requires the legal, scientiﬁc, and technical

knowledge, skill, thoroughness and preparation

reasonably necessary for the representation.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.102 Scope of representation and

allocation of authority between client and

practitioner.

(a) Subject to paragraphs (c) and (d) of this

section, a practitioner shall abide by a client’s

decisions concerning the objectives of representation

and, as required by § 11.104, shall consult with the

client as to the means by which they are to be

pursued. A practitioner may take such action on

behalf of the client as is impliedly authorized to

carry out the representation. A practitioner shall

abide by a client’s decision whether to settle a

matter.

(b) [Reserved]

representation if the limitation is reasonable under

the circumstances and the client gives informed

consent.

(d) A practitioner shall not counsel a client to

engage, or assist a client, in conduct that the

practitioner knows is criminal or fraudulent, but a

practitioner may discuss the legal consequences of

any proposed course of conduct with a client and

may counsel or assist a client to make a good-faith

R-358January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.61

effort to determine the validity, scope, meaning or

application of the law.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.103 Diligence.

A practitioner shall act with reasonable diligence

and promptness in representing a client.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.104 Communication.

(a) A practitioner shall:

(1) Promptly inform the client of any

decision or circumstance with respect to which the

client’s informed consent is required by the USPTO

Rules of Professional Conduct;

(2) Reasonably consult with the client about

the means by which the client’s objectives are to be

accomplished;

(3) Keep the client reasonably informed

about the status of the matter;

(4) Promptly comply with reasonable

requests for information from the client; and

(5) Consult with the client about any relevant

limitation on the practitioner’s conduct when the

practitioner knows that the client expects assistance

not permitted by the USPTO Rules of Professional

Conduct or other law.

(b) A practitioner shall explain a matter to the

extent reasonably necessary to permit the client to

make informed decisions regarding the

representation.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.105 Fees.

(a) A practitioner shall not make an agreement

for, charge, or collect an unreasonable fee or an

unreasonable amount for expenses. The factors to

be considered in determining the reasonableness of

a fee include the following:

(1) The time and labor required, the novelty

and difﬁculty of the questions involved, and the skill

requisite to perform the legal service properly;

(2) The likelihood, if apparent to the client,

that the acceptance of the particular employment

will preclude other employment by the practitioner;

(3) The fee customarily charged in the

locality for similar legal services;

(4) The amount involved and the results

obtained;

(5) The time limitations imposed by the

client or by the circumstances;

(6) The nature and length of the professional

relationship with the client;

(7) The experience, reputation, and ability

of the practitioner or practitioners performing the

services; and

(8) Whether the fee is ﬁxed or contingent.

(b) The scope of the representation and the basis

or rate of the fee and expenses for which the client

will be responsible shall be communicated to the

client, preferably in writing, before or within a

reasonable time after commencing the

representation, except when the practitioner will

charge a regularly represented client on the same

basis or rate. Any changes in the basis or rate of the

fee or expenses shall also be communicated to the

client.

the matter for which the service is rendered, except

in a matter in which a contingent fee is prohibited

by law. A contingent fee agreement shall be in a

writing signed by the client and shall state the

method by which the fee is to be determined,

including the percentage or percentages that shall

accrue to the practitioner in the event of settlement,

trial or appeal; litigation and other expenses to be

deducted from the recovery; and whether such

expenses are to be deducted before or after the

contingent fee is calculated. The agreement must

clearly notify the client of any expenses for which

the client will be liable whether or not the client is

the prevailing party. Upon conclusion of a

contingent fee matter, the practitioner shall provide

the client with a written statement stating the

outcome of the matter and, if there is a recovery,

showing the remittance to the client and the method

of its determination.

January 2018R-359

§ 11.105CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(d) [Reserved]

(e) A division of a fee between practitioners

who are not in the same ﬁrm may be made only if:

(1) The division is in proportion to the

services performed by each practitioner or each

practitioner assumes joint responsibility for the

representation;

(2) The client agrees to the arrangement,

including the share each practitioner will receive,

and the agreement is conﬁrmed in writing; and

(3) The total fee is reasonable.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.106 Conﬁdentiality of information.

(a) A practitioner shall not reveal information

relating to the representation of a client unless the

client gives informed consent, the disclosure is

impliedly authorized in order to carry out the

representation, the disclosure is permitted by

paragraph (b) of this section, or the disclosure is

required by paragraph (c) of this section.

(b) A practitioner may reveal information

relating to the representation of a client to the extent

the practitioner reasonably believes necessary:

(1) To prevent reasonably certain death or

substantial bodily harm;

(2) To prevent the client from engaging in

inequitable conduct before the Ofﬁce or from

committing a crime or fraud that is reasonably

certain to result in substantial injury to the ﬁnancial

interests or property of another and in furtherance

of which the client has used or is using the

practitioner’s services;

(3) To prevent, mitigate or rectify substantial

injury to the ﬁnancial interests or property of another

that is reasonably certain to result or has resulted

from the client’s commission of a crime, fraud, or

inequitable conduct before the Ofﬁce in furtherance

of which the client has used the practitioner’s

services;

(4) To secure legal advice about the

practitioner’s compliance with the USPTO Rules

of Professional Conduct;

(5) To establish a claim or defense on behalf

of the practitioner in a controversy between the

practitioner and the client, to establish a defense to

a criminal charge or civil claim against the

practitioner based upon conduct in which the client

was involved, or to respond to allegations in any

proceeding concerning the practitioner’s

representation of the client; or

(6) To comply with other law or a court

order.

information necessary to comply with applicable

duty of disclosure provisions.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.107 Conﬂict of interest; Current clients.

(a) Except as provided in paragraph (b) of this

section, a practitioner shall not represent a client if

the representation involves a concurrent conﬂict of

interest. A concurrent conﬂict of interest exists if:

(1) The representation of one client will be

directly adverse to another client; or

(2) There is a signiﬁcant risk that the

representation of one or more clients will be

materially limited by the practitioner’s

responsibilities to another client, a former client or

a third person or by a personal interest of the

practitioner.

(b) Notwithstanding the existence of a

concurrent conﬂict of interest under paragraph (a)

of this section, a practitioner may represent a client

if:

(1) The practitioner reasonably believes that

the practitioner will be able to provide competent

and diligent representation to each affected client;

(2) The representation is not prohibited by

law;

(3) The representation does not involve the

assertion of a claim by one client against another

client represented by the practitioner in the same

litigation or other proceeding before a tribunal; and

(4) Each affected client gives informed

consent, conﬁrmed in writing.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

R-360January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.106

§ 11.108 Conﬂict of interest; Current clients;

Speciﬁc rules.

(a) A practitioner shall not enter into a business

transaction with a client or knowingly acquire an

ownership, possessory, security or other pecuniary

interest adverse to a client unless:

(1) The transaction and terms on which the

practitioner acquires the interest are fair and

reasonable to the client and are fully disclosed and

transmitted in writing in a manner that can be

reasonably understood by the client;

(2) The client is advised in writing of the

desirability of seeking and is given a reasonable

opportunity to seek the advice of independent legal

counsel in the transaction; and

(3) The client gives informed consent, in a

writing signed by the client, to the essential terms

of the transaction and the practitioner’s role in the

transaction, including whether the practitioner is

representing the client in the transaction.

(b) A practitioner shall not use information

relating to representation of a client to the

disadvantage of the client unless the client gives

informed consent, except as permitted or required

by the USPTO Rules of Professional Conduct.

gift from a client, including a testamentary gift, or

prepare on behalf of a client an instrument giving

the practitioner or a person related to the practitioner

any substantial gift unless the practitioner or other

recipient of the gift is related to the client. For

purposes of this paragraph, related persons include

a spouse, child, grandchild, parent, grandparent or

other relative or individual with whom the

practitioner or the client maintains a close, familial

relationship.

(d) Prior to the conclusion of representation of

a client, a practitioner shall not make or negotiate

an agreement giving the practitioner literary or

media rights to a portrayal or account based in

substantial part on information relating to the

representation.

(e) A practitioner shall not provide ﬁnancial

assistance to a client in connection with pending or

contemplated litigation or a proceeding before the

Ofﬁce, except that:

(1) A practitioner may advance court costs

and expenses of litigation, the repayment of which

may be contingent on the outcome of the matter;

(2) A practitioner representing an indigent

client may pay court costs and expenses of litigation

or a proceeding before the Ofﬁce on behalf of the

client;

(3) A practitioner may advance costs and

expenses in connection with a proceeding before

the Ofﬁce provided the client remains ultimately

liable for such costs and expenses; and

(4) A practitioner may also advance any fee

required to prevent or remedy an abandonment of

a client’s application by reason of an act or omission

attributable to the practitioner and not to the client,

whether or not the client is ultimately liable for such

fee.

(f) A practitioner shall not accept compensation

for representing a client from one other than the

client unless:

(1) The client gives informed consent;

(2) There is no interference with the

practitioner’s independence of professional

judgment or with the client-practitioner relationship;

and

(3) Information relating to representation of

a client is protected as required by § 11.106.

(g) A practitioner who represents two or more

clients shall not participate in making an aggregate

settlement of the claims of or against the clients,

unless each client gives informed consent, in a

writing signed by the client. The practitioner’s

disclosure shall include the existence and nature of

all the claims involved and of the participation of

each person in the settlement.

(h) A practitioner shall not:

(1) Make an agreement prospectively

limiting the practitioner’s liability to a client for

malpractice unless the client is independently

represented in making the agreement; or

(2) Settle a claim or potential claim for such

liability with an unrepresented client or former client

unless that person is advised in writing of the

desirability of seeking and is given a reasonable

opportunity to seek the advice of independent legal

counsel in connection therewith.

January 2018R-361

§ 11.108CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(i) A practitioner shall not acquire a proprietary

interest in the cause of action, subject matter of

litigation, or a proceeding before the Ofﬁce which

the practitioner is conducting for a client, except

that the practitioner may, subject to the other

provisions in this section:

(1) Acquire a lien authorized by law to

secure the practitioner’s fee or expenses;

(2) Contract with a client for a reasonable

contingent fee in a civil case; and

(3) In a patent case or a proceeding before

the Ofﬁce, take an interest in the patent or patent

application as part or all of his or her fee.

(j) [Reserved]

(k) While practitioners are associated in a ﬁrm,

a prohibition in paragraphs (a) through (i) of this

section that applies to any one of them shall apply

to all of them.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.109 Duties to former clients.

(a) A practitioner who has formerly represented

a client in a matter shall not thereafter represent

another person in the same or a substantially related

matter in which that person’s interests are materially

adverse to the interests of the former client unless

the former client gives informed consent, conﬁrmed

in writing.

(b) A practitioner shall not knowingly represent

a person in the same or a substantially related matter

in which a ﬁrm with which the practitioner formerly

was associated had previously represented a client:

(1) Whose interests are materially adverse

to that person; and

(2) About whom the practitioner had

acquired information protected by §§ 11.106 and

11.109(c) that is material to the matter; unless the

former client gives informed consent, conﬁrmed in

writing.

a client in a matter or whose present or former ﬁrm

has formerly represented a client in a matter shall

not thereafter:

(1) Use information relating to the

representation to the disadvantage of the former

client except as the USPTO Rules of Professional

Conduct would permit or require with respect to a

client, or when the information has become

generally known; or

(2) Reveal information relating to the

representation except as the USPTO Rules of

Professional Conduct would permit or require with

respect to a client.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.110 Imputation of conﬂicts of interest;

General rule.

(a) While practitioners are associated in a ﬁrm,

none of them shall knowingly represent a client

when any one of them practicing alone would be

prohibited from doing so by §§ 11.107 or 11.109,

unless:

(1) The prohibition is based on a personal

interest of the disqualiﬁed practitioner and does not

present a signiﬁcant risk of materially limiting the

representation of the client by the remaining

practitioners in the ﬁrm; or

(2) The prohibition is based upon §

11.109(a) or (b), and arises out of the disqualiﬁed

practitioner’s association with a prior ﬁrm, and

(i) The disqualiﬁed practitioner is timely

screened from any participation in the matter and is

apportioned no part of the fee therefrom; and

(ii) Written notice is promptly given to

any affected former client to enable the former client

to ascertain compliance with the provisions of this

section, which shall include a description of the

screening procedures employed; a statement of the

ﬁrm’s and of the screened practitioner’s compliance

with the USPTO Rules of Professional Conduct; a

statement that review may be available before a

tribunal; and an agreement by the ﬁrm to respond

promptly to any written inquiries or objections by

the former client about the screening procedures.

(b) When a practitioner has terminated an

association with a ﬁrm, the ﬁrm is not prohibited

from thereafter representing a person with interests

materially adverse to those of a client represented

by the formerly associated practitioner and not

currently represented by the ﬁrm, unless:

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.109

(1) The matter is the same or substantially

related to that in which the formerly associated

practitioner represented the client; and

(2) Any practitioner remaining in the ﬁrm

has information protected by §§ 11.106 and

11.109(c) that is material to the matter.

may be waived by the affected client under the

conditions stated in § 11.107.

(d) The disqualiﬁcation of practitioners

associated in a ﬁrm with former or current Federal

Government lawyers is governed by § 11.111.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.111 Former or current Federal

Government employees.

A practitioner who is a former or current Federal

Government employee shall not engage in any

conduct which is contrary to applicable Federal

ethics law, including conﬂict of interest statutes and

regulations of the department, agency or commission

formerly or currently employing said practitioner.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.112 Former judge, arbitrator, mediator

or other third-party neutral.

(a) Except as stated in paragraph (d) of this

section, a practitioner shall not represent anyone in

connection with a matter in which the practitioner

participated personally and substantially as a judge

or other adjudicative ofﬁcer or law clerk to such a

person or as an arbitrator, mediator or other

third-party neutral, unless all parties to the

proceeding give informed consent, conﬁrmed in

writing.

(b) A practitioner shall not negotiate for

employment with any person who is involved as a

party or as practitioner for a party in a matter in

which the practitioner is participating personally

and substantially as a judge or other adjudicative

ofﬁcer or as an arbitrator, mediator or other

third-party neutral. A practitioner serving as a law

clerk to a judge or other adjudicative ofﬁcer may

negotiate for employment with a party or practitioner

involved in a matter in which the clerk is

participating personally and substantially, but only

after the practitioner has notiﬁed the judge, or other

adjudicative ofﬁcer.

(a) of this section, no practitioner in a ﬁrm with

which that practitioner is associated may knowingly

undertake or continue representation in the matter

unless:

(1) The disqualiﬁed practitioner is timely

screened from any participation in the matter and is

apportioned no part of the fee therefrom; and

(2) Written notice is promptly given to the

parties and any appropriate tribunal to enable them

to ascertain compliance with the provisions of this

section.

(d) An arbitrator selected as a partisan of a party

in a multimember arbitration panel is not prohibited

from subsequently representing that party.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.113 Organization as client.

(a) A practitioner employed or retained by an

organization represents the organization acting

through its duly authorized constituents.

(b) If a practitioner for an organization knows

that an ofﬁcer, employee or other person associated

with the organization is engaged in action, intends

to act or refuses to act in a matter related to the

representation that is a violation of a legal obligation

to the organization, or a violation of law that

reasonably might be imputed to the organization,

and that is likely to result in substantial injury to the

organization, then the practitioner shall proceed as

is reasonably necessary in the best interest of the

organization. Unless the practitioner reasonably

believes that it is not necessary in the best interest

of the organization to do so, the practitioner shall

refer the matter to higher authority in the

organization, including, if warranted by the

circumstances, to the highest authority that can act

on behalf of the organization as determined by

applicable law.

section, if

January 2018R-363

§ 11.113CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) Despite the practitioner’s efforts in

accordance with paragraph (b) of this section the

highest authority that can act on behalf of the

organization insists upon or fails to address in a

timely and appropriate manner an action, or a refusal

to act, that is clearly a violation of law, and

(2) The practitioner reasonably believes that

the violation is reasonably certain to result in

substantial injury to the organization, then the

practitioner may reveal information relating to the

representation whether or not § 11.106 permits such

disclosure, but only if and to the extent the

practitioner reasonably believes necessary to prevent

substantial injury to the organization.

(d) Paragraph (c) of this section shall not apply

with respect to information relating to a

practitioner’s representation of an organization to

investigate an alleged violation of law, or to defend

the organization or an ofﬁcer, employee or other

constituent associated with the organization against

a claim arising out of an alleged violation of law.

(e) A practitioner who reasonably believes that

he or she has been discharged because of the

practitioner’s actions taken pursuant to paragraphs

(b) or (c) of this section, or who withdraws under

circumstances that require or permit the practitioner

to take action under either of those paragraphs, shall

proceed as the practitioner reasonably believes

necessary to assure that the organization’s highest

authority is informed of the practitioner’s discharge

or withdrawal.

(f) In dealing with an organization’s directors,

ofﬁcers, employees, members, shareholders, or other

constituents, a practitioner shall explain the identity

of the client when the practitioner knows or

reasonably should know that the organization’s

interests are adverse to those of the constituents with

whom the practitioner is dealing.

(g) A practitioner representing an organization

may also represent any of its directors, ofﬁcers,

employees, members, shareholders or other

constituents, subject to the provisions of § 11.107.

If the organization’s consent to the dual

representation is required by § 11.107, the consent

shall be given by an appropriate ofﬁcial of the

organization other than the individual who is to be

represented, or by the shareholders.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.114 Client with diminished capacity.

(a) When a client’s capacity to make adequately

considered decisions in connection with a

representation is diminished, whether because of

minority, mental impairment or for some other

reason, the practitioner shall, as far as reasonably

possible, maintain a normal client-practitioner

relationship with the client.

(b) When the practitioner reasonably believes

that the client has diminished capacity, is at risk of

substantial physical, ﬁnancial or other harm unless

action is taken and cannot adequately act in the

client’s own interest, the practitioner may take

reasonably necessary protective action, including

consulting with individuals or entities that have the

ability to take action to protect the client and, in

appropriate cases, seeking the appointment of a

guardian ad litem, conservator or guardian.

a client with diminished capacity is protected under

§ 11.106. When taking protective action pursuant

to paragraph (b) of this section, the practitioner is

impliedly authorized under § 11.106(a) to reveal

information about the client, but only to the extent

reasonably necessary to protect the client’s interests.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.115 Safekeeping property.

(a) A practitioner shall hold property of clients

or third persons that is in a practitioner’s possession

in connection with a representation separate from

the practitioner’s own property. Funds shall be kept

in a separate account maintained in the state where

the practitioner’s ofﬁce is situated, or elsewhere

with the consent of the client or third person. Where

the practitioner’s ofﬁce is situated in a foreign

country, funds shall be kept in a separate account

maintained in that foreign country or elsewhere with

the consent of the client or third person. Other

property shall be identiﬁed as such and appropriately

safeguarded. Complete records of such account

funds and other property shall be kept by the

practitioner and shall be preserved for a period of

ﬁve years after termination of the representation.

(b) A practitioner may deposit the practitioner’s

own funds in a client trust account for the sole

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.114

purpose of paying bank service charges on that

account, but only in an amount necessary for that

purpose.

account legal fees and expenses that have been paid

in advance, to be withdrawn by the practitioner only

as fees are earned or expenses incurred.

(d) Upon receiving funds or other property in

which a client or third person has an interest, a

practitioner shall promptly notify the client or third

person. Except as stated in this section or otherwise

permitted by law or by agreement with the client, a

practitioner shall promptly deliver to the client or

third person any funds or other property that the

client or third person is entitled to receive and, upon

request by the client or third person, shall promptly

render a full accounting regarding such property.

(e) When in the course of representation a

practitioner is in possession of property in which

two or more persons (one of whom may be the

practitioner) claim interests, the property shall be

kept separate by the practitioner until the dispute is

resolved. The practitioner shall promptly distribute

all portions of the property as to which the interests

are not in dispute.

(f) All separate accounts for clients or third

persons kept by a practitioner must also comply with

the following provisions:

(1) Required records. The records to be kept

include:

(i) Receipt and disbursement journals

containing a record of deposits to and withdrawals

from client trust accounts, speciﬁcally identifying

the date, source, and description of each item

deposited, as well as the date, payee and purpose of

each disbursement;

(ii) Ledger records for all client trust

accounts showing, for each separate trust client or

beneﬁciary, the source of all funds deposited, the

names of all persons for whom the funds are or were

held, the amount of such funds, the descriptions and

amounts of charges or withdrawals, and the names

of all persons or entities to whom such funds were

disbursed;

(iii) Copies of retainer and compensation

agreements with clients;

(iv) Copies of accountings to clients or

third persons showing the disbursement of funds to

them or on their behalf;

(v) Copies of bills for legal fees and

expenses rendered to clients;

(vi) Copies of records showing

disbursements on behalf of clients;

(vii) The physical or electronic

equivalents of all checkbook registers, bank

statements, records of deposit, prenumbered

canceled checks, and substitute checks provided by

a ﬁnancial institution;

(viii) Records of all electronic transfers

from client trust accounts, including the name of

the person authorizing transfer, the date of transfer,

the name of the recipient and conﬁrmation from the

ﬁnancial institution of the trust account number from

which money was withdrawn and the date and the

time the transfer was completed;

(ix) Copies of monthly trial balances and

quarterly reconciliations of the client trust accounts

maintained by the practitioner; and

(x) Copies of those portions of client ﬁles

that are reasonably related to client trust account

transactions.

(2) Client trust account safeguards. With

respect to client trust accounts required by

paragraphs (a) through (e) of this section:

(i) Only a practitioner or a person under

the direct supervision of the practitioner shall be an

authorized signatory or authorize transfers from a

client trust account;

(ii) Receipts shall be deposited intact and

records of deposit should be sufﬁciently detailed to

identify each item; and

(iii) Withdrawals shall be made only by

check payable to a named payee and not to cash, or

by authorized electronic transfer.

(3) Availability of records. Records required

by paragraph (f)(1) of this section may be

maintained by electronic, photographic, or other

media provided that they otherwise comply with

paragraphs (f)(1) and (f)(2) of this section and that

printed copies can be produced. These records shall

be readily accessible to the practitioner.

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§ 11.115CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(4) Lawyers. The records kept by a lawyer

are deemed to be in compliance with this section if

the types of records that are maintained meet the

recordkeeping requirements of a state in which the

lawyer is licensed and in good standing, the

recordkeeping requirements of the state where the

lawyer’s principal place of business is located, or

the recordkeeping requirements of this section.

(5) Patent agents and persons granted

limited recognition who are employed in the United

States by a law ﬁrm. The records kept by a law ﬁrm

employing one or more registered patent agents or

persons granted limited recognition under § 11.9

are deemed to be in compliance with this section if

the types of records that are maintained meet the

recordkeeping requirements of the state where at

least one practitioner of the law ﬁrm is licensed and

in good standing, the recordkeeping requirements

of the state where the law ﬁrm’s principal place of

business is located, or the recordkeeping

requirements of this section.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.116 Declining or terminating

representation.

(a) Except as stated in paragraph (c) of this

section, a practitioner shall not represent a client,

or where representation has commenced, shall

withdraw from the representation of a client if:

(1) The representation will result in violation

of the USPTO Rules of Professional Conduct or

other law;

(2) The practitioner’s physical or mental

condition materially impairs the practitioner’s ability

to represent the client; or

(3) The practitioner is discharged.

(b) Except as stated in paragraph (c) of this

section, a practitioner may withdraw from

representing a client if:

(1) Withdrawal can be accomplished without

material adverse effect on the interests of the client;

(2) The client persists in a course of action

involving the practitioner’s services that the

practitioner reasonably believes is criminal or

fraudulent;

(3) The client has used the practitioner’s

services to perpetrate a crime or fraud;

(4) A client insists upon taking action that

the practitioner considers repugnant or with which

the practitioner has a fundamental disagreement;

(5) The client fails substantially to fulﬁll an

obligation to the practitioner regarding the

practitioner’s services and has been given reasonable

warning that the practitioner will withdraw unless

the obligation is fulﬁlled;

(6) The representation will result in an

unreasonable ﬁnancial burden on the practitioner

or has been rendered unreasonably difﬁcult by the

client; or

(7) Other good cause for withdrawal exists.

law requiring notice to or permission of a tribunal

when terminating a representation. When ordered

to do so by a tribunal, a practitioner shall continue

representation notwithstanding good cause for

terminating the representation.

(d) Upon termination of representation, a

practitioner shall take steps to the extent reasonably

practicable to protect a client’s interests, such as

giving reasonable notice to the client, allowing time

for employment of other counsel, surrendering

papers and property to which the client is entitled

and refunding any advance payment of fee or

expense that has not been earned or incurred. The

practitioner may retain papers relating to the client

to the extent permitted by other law.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.117 Sale of law practice.

A practitioner or a law ﬁrm may sell or purchase a

law practice, or an area of law practice, including

good will, if the following conditions are satisﬁed:

(a) The seller ceases to engage in the private

practice of law, or in the area of practice that has

been sold, in a geographic area in which the practice

has been conducted;

(b)(1) Except as provided in paragraph (b)(2)

of this section, the entire practice, or the entire area

of practice, is sold to one or more lawyers or law

ﬁrms;

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.116

(2) To the extent the practice or the area of

practice involves patent proceedings before the

Ofﬁce, that practice or area of practice may be sold

only to one or more registered practitioners or law

ﬁrms that include at least one registered practitioner;

(c)(1) The seller gives written notice to each

of the seller’s clients regarding:

(i) The proposed sale;

(ii) The client’s right to retain other

counsel or to take possession of the ﬁle; and

(iii) The fact that the client’s consent to

the transfer of the client’s ﬁles will be presumed if

the client does not take any action or does not

otherwise object within ninety (90) days after receipt

of the notice.

(2) If a client cannot be given notice, the

representation of that client may be transferred to

the purchaser only upon entry of an order so

authorizing by a court having jurisdiction. The seller

may disclose to the court in camera information

relating to the representation only to the extent

necessary to obtain an order authorizing the transfer

of a ﬁle; and

(d) The fees charged clients shall not be

increased by reason of the sale.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.118 Duties to prospective client.

(a) A person who discusses with a practitioner

the possibility of forming a client-practitioner

relationship with respect to a matter is a prospective

client.

(b) Even when no client-practitioner relationship

ensues, a practitioner who has had discussions with

the prospective client shall not use or reveal

information learned in the consultation, except as §

11.109 would permit with respect to information of

a former client.

this section shall not represent a client with interests

materially adverse to those of a prospective client

in the same or a substantially related matter if the

practitioner received information from the

prospective client that could be signiﬁcantly harmful

to that person in the matter, except as provided in

paragraph (d) of this section. If a practitioner is

disqualiﬁed from representation under this

paragraph, no practitioner in a ﬁrm with which that

practitioner is associated may knowingly undertake

or continue representation in such a matter, except

as provided in paragraph (d) of this section.

(d) When the practitioner has received

disqualifying information as deﬁned in paragraph

(1) Both the affected client and the

prospective client have given informed consent,

conﬁrmed in writing; or

(2) The practitioner who received the

information took reasonable measures to avoid

exposure to more disqualifying information than

was reasonably necessary to determine whether to

represent the prospective client; and

(i) The disqualiﬁed practitioner is timely

screened from any participation in the matter and is

apportioned no part of the fee therefrom; and

(ii) Written notice is promptly given to

the prospective client.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.119 - 11.200 [Reserved]

COUNSELOR

§ 11.201 Advisor.

In representing a client, a practitioner shall exercise

independent professional judgment and render

candid advice. In rendering advice, a practitioner

may refer not only to law but to other considerations

such as moral, economic, social and political factors

that may be relevant to the client’s situation.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.202 [Reserved]

§ 11.203 Evaluation for use by third persons.

(a) A practitioner may provide an evaluation of

a matter affecting a client for the use of someone

other than the client if the practitioner reasonably

believes that making the evaluation is compatible

January 2018R-367

§ 11.203CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

with other aspects of the practitioner’s relationship

with the client.

(b) When the practitioner knows or reasonably

should know that the evaluation is likely to affect

the client’s interests materially and adversely, the

practitioner shall not provide the evaluation unless

the client gives informed consent.

connection with a report of an evaluation,

information relating to the evaluation is otherwise

protected by § 11.106.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.204 Practitioner serving as third-party

neutral.

(a) A practitioner serves as a third-party neutral

when the practitioner assists two or more persons

who are not clients of the practitioner to reach a

resolution of a dispute or other matter that has arisen

between them. Service as a third-party neutral may

include service as an arbitrator, a mediator or in

such other capacity as will enable the practitioner

to assist the parties to resolve the matter.

(b) A practitioner serving as a third-party neutral

shall inform unrepresented parties that the

practitioner is not representing them. When the

practitioner knows or reasonably should know that

a party does not understand the practitioner’s role

in the matter, the practitioner shall explain the

difference between the practitioner’s role as a

third-party neutral and a practitioner’s role as one

who represents a client.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.205 - 11.300 [Reserved]

ADVOCATE

§ 11.301 Meritorious claims and contentions.

A practitioner shall not bring or defend a proceeding,

or assert or controvert an issue therein, unless there

is a basis in law and fact for doing so that is not

frivolous, which includes a good-faith argument for

an extension, modiﬁcation or reversal of existing

law.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.302 Expediting proceedings.

A practitioner shall make reasonable efforts to

expedite proceedings before a tribunal consistent

with the interests of the client.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.303 Candor toward the tribunal.

(a) A practitioner shall not knowingly:

(1) Make a false statement of fact or law to

a tribunal or fail to correct a false statement of

material fact or law previously made to the tribunal

by the practitioner;

(2) Fail to disclose to the tribunal legal

authority in the controlling jurisdiction known to

the practitioner to be directly adverse to the position

of the client and not disclosed by opposing counsel

in an inter partes proceeding, or fail to disclose

such authority in an ex parte proceeding before the

Ofﬁce if such authority is not otherwise disclosed;

(3) Offer evidence that the practitioner

knows to be false. If a practitioner, the practitioner’s

client, or a witness called by the practitioner, has

offered material evidence and the practitioner comes

to know of its falsity, the practitioner shall take

reasonable remedial measures, including, if

necessary, disclosure to the tribunal. A practitioner

may refuse to offer evidence that the practitioner

reasonably believes is false.

(b) A practitioner who represents a client in a

proceeding before a tribunal and who knows that a

person intends to engage, is engaging or has engaged

in criminal or fraudulent conduct related to the

proceeding shall take reasonable remedial measures,

including, if necessary, disclosure to the tribunal.

of this section continue to the conclusion of the

proceeding, and apply even if compliance requires

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.204

disclosure of information otherwise protected by §

11.106.

(d) In an ex parte proceeding, a practitioner

shall inform the tribunal of all material facts known

to the practitioner that will enable the tribunal to

make an informed decision, whether or not the facts

are adverse.

(e) In a proceeding before the Ofﬁce, a

practitioner shall disclose to the Ofﬁce information

necessary to comply with applicable duty of

disclosure provisions.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.304 Fairness to opposing party and

counsel.

A practitioner shall not:

(a) Unlawfully obstruct another party’s access

to evidence or unlawfully alter, destroy or conceal

a document or other material having potential

evidentiary value. A practitioner shall not counsel

or assist another person to do any such act;

(b) Falsify evidence, counsel or assist a witness

to testify falsely, or offer an inducement to a witness

that is prohibited by law;

rules of a tribunal except for an open refusal based

on an assertion that no valid obligation exists;

(d) Make a frivolous discovery request or fail

to make a reasonably diligent effort to comply with

a legally proper discovery request by an opposing

party;

(e) In a proceeding before a tribunal, allude to

any matter that the practitioner does not reasonably

believe is relevant or that will not be supported by

admissible evidence, assert personal knowledge of

facts in issue except when testifying as a witness,

or state a personal opinion as to the justness of a

cause, the credibility of a witness, the culpability of

a civil litigant or the guilt or innocence of an

accused; or

(f) Request a person other than a client to refrain

from voluntarily giving relevant information to

another party unless:

(1) The person is a relative or an employee

or other agent of a client; and

(2) The practitioner reasonably believes that

the person’s interests will not be adversely affected

by refraining from giving such information.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.305 Impartiality and decorum of the

tribunal.

A practitioner shall not:

(a) Seek to inﬂuence a judge, hearing ofﬁcer,

administrative law judge, administrative patent

judge, administrative trademark judge, juror,

prospective juror, employee or ofﬁcer of the Ofﬁce,

or other ofﬁcial by means prohibited by law;

(b) Communicate ex parte with such a person

during the proceeding unless authorized to do so by

law, rule or court order; or

(d) Engage in conduct intended to disrupt any

proceeding before a tribunal.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.306 Trial publicity.

(a) A practitioner who is participating or has

participated in the investigation or litigation of a

matter shall not make an extrajudicial statement that

the practitioner knows or reasonably should know

will be disseminated by means of public

communication and will have a substantial

likelihood of materially prejudicing an adjudicative

proceeding in the matter.

(b) Notwithstanding paragraph (a) of this

section, a practitioner may state:

(1) The claim, offense or defense involved

and, except when prohibited by law, the identity of

the persons involved;

(2) Information contained in a public record;

(3) That an investigation of a matter is in

progress;

(4) The scheduling or result of any step in

litigation;

(5) A request for assistance in obtaining

evidence and information necessary thereto; and

January 2018R-369

§ 11.306CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(6) A warning of danger concerning the

behavior of a person involved, when there is reason

to believe that there exists the likelihood of

substantial harm to an individual or to the public

interest.

section, a practitioner may make a statement that a

reasonable practitioner would believe is required to

protect a client from the substantial undue

prejudicial effect of recent publicity not initiated by

the practitioner or the practitioner’s client. A

statement made pursuant to this paragraph shall be

limited to such information as is necessary to

mitigate the recent adverse publicity.

(d) No practitioner associated in a ﬁrm or

government agency with a practitioner subject to

paragraph (a) of this section shall make a statement

prohibited by paragraph (a).

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.307 Practitioner as witness.

(a) A practitioner shall not act as advocate at a

proceeding before a tribunal in which the

practitioner is likely to be a necessary witness

unless:

(1) The testimony relates to an uncontested

issue;

(2) The testimony relates to the nature and

value of legal services rendered in the case; or

(3) Disqualiﬁcation of the practitioner would

work substantial hardship on the client.

(b) A practitioner may act as advocate in a

proceeding before a tribunal in which another

practitioner in the practitioner’s ﬁrm is likely to be

called as a witness unless precluded from doing so

by §§ 11.107 or 11.109.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.308 [Reserved]

§ 11.309 Advocate in nonadjudicative

proceedings.

A practitioner representing a client before a

legislative body or administrative agency in a

nonadjudicative proceeding shall disclose that the

appearance is in a representative capacity and shall

conform to the provisions of §§ 11.303(a) through

(c), 11.304(a) through (c), and 11.305.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.310 - 11.400 [Reserved]

TRANSACTIONS WITH PERSONS

OTHER THAN CLIENTS

§ 11.401 Truthfulness in statements to

others.

In the course of representing a client, a practitioner

shall not knowingly:

(a) Make a false statement of material fact or

law to a third person; or

(b) Fail to disclose a material fact to a third

person when disclosure is necessary to avoid

assisting a criminal or fraudulent act by a client,

unless disclosure is prohibited by § 11.106.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.402 Communication with person

represented by a practitioner.

(a) In representing a client, a practitioner shall

not communicate about the subject of the

representation with a person the practitioner knows

to be represented by another practitioner in the

matter, unless the practitioner has the consent of the

other practitioner or is authorized to do so by law,

rule, or a court order.

(b) This section does not prohibit

communication by a practitioner with government

ofﬁcials who are otherwise represented by counsel

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.307

and who have the authority to redress the grievances

of the practitioner’s client, provided that, if the

communication relates to a matter for which the

government ofﬁcial is represented, then prior to the

communication the practitioner must disclose to

such government ofﬁcial both the practitioner’s

identity and the fact that the practitioner represents

a party with a claim against the government.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.403 Dealing with unrepresented person.

In dealing on behalf of a client with a person who

is not represented by a practitioner, a practitioner

shall not state or imply that the practitioner is

disinterested. When the practitioner knows or

reasonably should know that the unrepresented

person misunderstands the practitioner’s role in the

matter, the practitioner shall make reasonable efforts

to correct the misunderstanding. The practitioner

shall not give legal advice to an unrepresented

person, other than the advice to secure counsel, if

the practitioner knows or reasonably should know

that the interests of such a person are or have a

reasonable possibility of being in conﬂict with the

interests of the client.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.404 Respect for rights of third persons.

(a) In representing a client, a practitioner shall

not use means that have no substantial purpose other

than to embarrass, delay, or burden a third person,

or use methods of obtaining evidence that violate

the legal rights of such a person.

(b) A practitioner who receives a document or

electronically stored information relating to the

representation of the practitioner’s client and knows

or reasonably should know that the document or

electronically stored information was inadvertently

sent shall promptly notify the sender.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.405 - 11.500 [Reserved]

LAW FIRMS AND ASSOCIATIONS

§ 11.501 Responsibilities of partners,

managers, and supervisory practitioners.

(a) A practitioner who is a partner in a law ﬁrm,

and a practitioner who individually or together with

other practitioners possesses comparable managerial

authority in a law ﬁrm, shall make reasonable efforts

to ensure that the ﬁrm has in effect measures giving

reasonable assurance that all practitioners in the ﬁrm

conform to the USPTO Rules of Professional

Conduct.

(b) A practitioner having direct supervisory

authority over another practitioner shall make

reasonable efforts to ensure that the other

practitioner conforms to the USPTO Rules of

Professional Conduct.

another practitioner’s violation of the USPTO Rules

of Professional Conduct if:

(1) The practitioner orders or, with

knowledge of the speciﬁc conduct, ratiﬁes the

conduct involved; or

(2) The practitioner is a partner or has

comparable managerial authority in the law ﬁrm in

which the other practitioner practices, or has direct

supervisory authority over the other practitioner,

and knows of the conduct at a time when its

consequences can be avoided or mitigated but fails

to take reasonable remedial action.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.502 Responsibilities of a subordinate

practitioner.

(a) A practitioner is bound by the USPTO Rules

of Professional Conduct notwithstanding that the

practitioner acted at the direction of another person.

(b) A subordinate practitioner does not violate

the USPTO Rules of Professional Conduct if that

practitioner acts in accordance with a supervisory

practitioner’s reasonable resolution of an arguable

question of professional duty.

January 2018R-371

§ 11.502CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.503 Responsibilities regarding

non-practitioner assistance.

With respect to a non-practitioner assistant

employed or retained by or associated with a

practitioner:

(a) A practitioner who is a partner, and a

practitioner who individually or together with other

practitioners possesses comparable managerial

authority in a law ﬁrm shall make reasonable efforts

to ensure that the ﬁrm has in effect measures giving

reasonable assurance that the person’s conduct is

compatible with the professional obligations of the

practitioner;

(b) A practitioner having direct supervisory

authority over the non-practitioner assistant shall

make reasonable efforts to ensure that the person’s

conduct is compatible with the professional

obligations of the practitioner; and

conduct of such a person that would be a violation

of the USPTO Rules of Professional Conduct if

engaged in by a practitioner if:

(1) The practitioner orders or, with the

knowledge of the speciﬁc conduct, ratiﬁes the

conduct involved; or

(2) The practitioner is a partner or has

comparable managerial authority in the law ﬁrm in

which the person is employed, or has direct

supervisory authority over the person, and knows

of the conduct at a time when its consequences can

be avoided or mitigated but fails to take reasonable

remedial action.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.504 Professional independence of a

practitioner.

(a) A practitioner or law ﬁrm shall not share

legal fees with a non-practitioner, except that:

(1) An agreement by a practitioner with the

practitioner’s ﬁrm, partner, or associate may provide

for the payment of money, over a reasonable period

of time after the practitioner’s death, to the

practitioner’s estate or to one or more speciﬁed

persons;

(2) A practitioner who purchases the practice

of a deceased, disabled, or disappeared practitioner

may, pursuant to the provisions of § 11.117, pay to

the estate or other representative of that practitioner

the agreed-upon purchase price;

(3) A practitioner or law ﬁrm may include

non-practitioner employees in a compensation or

retirement plan, even though the plan is based in

whole or in part on a proﬁt-sharing arrangement;

and

(4) A practitioner may share legal fees,

whether awarded by a tribunal or received in

settlement of a matter, with a nonproﬁt organization

that employed, retained or recommended

employment of the practitioner in the matter and

that qualiﬁes under Section 501(c)(3) of the Internal

Revenue Code.

(b) A practitioner shall not form a partnership

with a non-practitioner if any of the activities of the

partnership consist of the practice of law.

recommends, employs, or pays the practitioner to

render legal services for another to direct or regulate

the practitioner’s professional judgment in rendering

such legal services.

(d) A practitioner shall not practice with or in

the form of a professional corporation or association

authorized to practice law for a proﬁt, if:

(1) A non-practitioner owns any interest

therein, except that a ﬁduciary representative of the

estate of a practitioner may hold the stock or interest

of the practitioner for a reasonable time during

administration;

(2) A non-practitioner is a corporate director

or ofﬁcer thereof or occupies the position of similar

responsibility in any form of association other than

a corporation; or

(3) A non-practitioner has the right to direct

or control the professional judgment of a

practitioner.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.503

§ 11.505 Unauthorized practice of law.

A practitioner shall not practice law in a jurisdiction

in violation of the regulation of the legal profession

in that jurisdiction, or assist another in doing so.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.506 Restrictions on right to practice.

A practitioner shall not participate in offering or

making:

(a) A partnership, shareholders, operating,

employment, or other similar type of agreement that

restricts the right of a practitioner to practice after

termination of the relationship, except an agreement

concerning beneﬁts upon retirement; or

(b) An agreement in which a restriction on the

practitioner’s right to practice is part of the

settlement of a client controversy.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.507 Responsibilities regarding

law-related services.

A practitioner shall be subject to the USPTO Rules

of Professional Conduct with respect to the provision

of law-related services if the law-related services

are provided:

(a) By the practitioner in circumstances that are

not distinct from the practitioner’s provision of legal

services to clients; or

(b) In other circumstances by an entity

controlled by the practitioner individually or with

others if the practitioner fails to take reasonable

measures to assure that a person obtaining the

law-related services knows that the services are not

legal services and that the protections of the

client-practitioner relationship do not exist.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.508 - 11.700 [Reserved]

INFORMATION ABOUT LEGAL

SERVICES

§ 11.701 Communications concerning a

practitioner’s services.

A practitioner shall not make a false or misleading

communication about the practitioner or the

practitioner’s services. A communication is false or

misleading if it contains a material misrepresentation

of fact or law, or omits a fact necessary to make the

statement considered as a whole not materially

misleading.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.702 Advertising.

(a) Subject to the requirements of §§ 11.701 and

11.703, a practitioner may advertise services through

written, recorded or electronic communication,

including public media.

(b) A practitioner shall not give anything of

value to a person for recommending the

practitioner’s services except that a practitioner may:

(1) Pay the reasonable costs of

advertisements or communications permitted by this

section;

(2) [Reserved]

(3) Pay for a law practice in accordance with

§ 11.117; and

(4) Refer clients to another practitioner or a

non-practitioner professional pursuant to an

agreement not otherwise prohibited under the

USPTO Rules of Professional Conduct that provides

for the other person to refer clients or customers to

the practitioner, if:

(i) The reciprocal referral agreement is

not exclusive, and

(ii) The client is informed of the

existence and nature of the agreement.

section shall include the name and ofﬁce address of

January 2018R-373

§ 11.702CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

at least one practitioner or law ﬁrm responsible for

its content.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.703 Direct contact with prospective

clients.

(a) A practitioner shall not by in-person, live

telephone or real-time electronic contact solicit

professional employment from a prospective client

when a signiﬁcant motive for the practitioner’s

doing so is the practitioner’s pecuniary gain, unless

the person contacted:

(1) Is a practitioner; or

(2) Has a family, close personal, or prior

professional relationship with the practitioner.

(b) A practitioner shall not solicit professional

employment from a prospective client by written,

recorded or electronic communication or by

in-person, telephone or real-time electronic contact

even when not otherwise prohibited by paragraph

(a) of this section, if:

(1) The prospective client has made known

to the practitioner a desire not to be solicited by the

practitioner; or

(2) The solicitation involves coercion, duress

or harassment.

communication from a practitioner soliciting

professional employment from a prospective client

known to be in need of legal services in a particular

matter shall include the words "Advertising

Material" on the outside envelope, if any, and at the

beginning and ending of any recorded or electronic

communication, unless the recipient of the

communication is a person speciﬁed in paragraphs

(a)(1) or (a)(2) of this section.

(d) Notwithstanding the prohibitions in

paragraph (a) of this section, a practitioner may

participate with a prepaid or group legal service plan

operated by an organization not owned or directed

by the practitioner that uses in-person or telephone

contact to solicit memberships or subscriptions for

the plan from persons who are not known to need

legal services in a particular matter covered by the

plan.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.704 Communication of ﬁelds of practice

and specialization.

(a) A practitioner may communicate the fact

that the practitioner does or does not practice in

particular ﬁelds of law.

(b) A registered practitioner who is an attorney

may use the designation "Patents," "Patent

Attorney," "Patent Lawyer," "Registered Patent

Attorney," or a substantially similar designation. A

registered practitioner who is not an attorney may

use the designation ‘"Patents," "Patent Agent,"

"Registered Patent Agent," or a substantially similar

designation. Unless authorized by § 11.14(b), a

registered patent agent shall not hold himself or

herself out as being qualiﬁed or authorized to

practice before the Ofﬁce in trademark matters or

before a court.

(d) A practitioner shall not state or imply that a

practitioner is certiﬁed as a specialist in a particular

ﬁeld of law, unless:

(1) The practitioner has been certiﬁed as a

specialist by an organization that has been approved

by an appropriate state authority or that has been

accredited by the American Bar Association; and

(2) The name of the certifying organization

is clearly identiﬁed in the communication.

(e) An individual granted limited recognition

under § 11.9 may use the designation "Limited

Recognition."

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.705 Firm names and letterheads.

(a) A practitioner shall not use a ﬁrm name,

letterhead or other professional designation that

violates § 11.701. A trade name may be used by a

practitioner in private practice if it does not imply

a connection with a government agency or with a

public or charitable legal services organization and

is not otherwise in violation of § 11.701.

(b) [Reserved]

R-374January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.703

ofﬁce shall not be used in the name of a law ﬁrm,

or in communications on its behalf, during any

substantial period in which the practitioner is not

actively and regularly practicing with the ﬁrm.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.706 - 11.800 [Reserved]

MAINTAINING THE INTEGRITY OF THE

PROFESSION

§ 11.801 Registration, recognition and

disciplinary matters.

An applicant for registration or recognition to

practice before the Ofﬁce, or a practitioner in

connection with an application for registration or

recognition, or a practitioner in connection with a

disciplinary or reinstatement matter, shall not:

(a) Knowingly make a false statement of

material fact; or

(b) Fail to disclose a fact necessary to correct a

misapprehension known by the person to have arisen

in the matter, fail to cooperate with the Ofﬁce of

Enrollment and Discipline in an investigation of any

matter before it, or knowingly fail to respond to a

lawful demand or request for information from an

admissions or disciplinary authority, except that the

provisions of this section do not require disclosure

of information otherwise protected by § 11.106.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.802 Judicial and legal ofﬁcials.

(a) A practitioner shall not make a statement

that the practitioner knows to be false or with

reckless disregard as to its truth or falsity concerning

the qualiﬁcations or integrity of a judge,

adjudicatory ofﬁcer or public legal ofﬁcer, or of a

candidate for election or appointment to judicial or

legal ofﬁce.

(b) A practitioner who is a candidate for judicial

ofﬁce shall comply with the applicable provisions

of the Code of Judicial Conduct.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.803 Reporting professional misconduct.

(a) A practitioner who knows that another

practitioner has committed a violation of the USPTO

Rules of Professional Conduct that raises a

substantial question as to that practitioner’s honesty,

trustworthiness or ﬁtness as a practitioner in other

respects, shall inform the OED Director and any

other appropriate professional authority.

(b) A practitioner who knows that a judge,

hearing ofﬁcer, administrative law judge,

administrative patent judge, or administrative

trademark judge has committed a violation of

applicable rules of judicial conduct that raises a

substantial question as to the individual’s ﬁtness for

ofﬁce shall inform the appropriate authority.

disclosure of information otherwise protected by §

11.106 or information gained while participating in

an approved lawyers assistance program.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.804 Misconduct.

It is professional misconduct for a practitioner to:

(a) Violate or attempt to violate the USPTO

Rules of Professional Conduct, knowingly assist or

induce another to do so, or do so through the acts

of another;

(b) Commit a criminal act that reﬂects adversely

on the practitioner’s honesty, trustworthiness or

ﬁtness as a practitioner in other respects;

fraud, deceit or misrepresentation;

(d) Engage in conduct that is prejudicial to the

administration of justice;

(e) State or imply an ability to inﬂuence

improperly a government agency or ofﬁcial or to

achieve results by means that violate the USPTO

Rules of Professional Conduct or other law;

(f) Knowingly assist a judge, hearing ofﬁcer,

administrative law judge, administrative patent

judge, administrative trademark judge, or judicial

January 2018R-375

§ 11.804CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

ofﬁcer in conduct that is a violation of applicable

rules of judicial conduct or other law;

(g) Knowingly assist an ofﬁcer or employee of

the Ofﬁce in conduct that is a violation of applicable

rules of conduct or other law;

(h) Be publicly disciplined on ethical or

professional misconduct grounds by any duly

constituted authority of:

(1) A State,

(2) The United States, or

(3) The country in which the practitioner

resides; or

(i) Engage in other conduct that adversely

reﬂects on the practitioner’s ﬁtness to practice

before the Ofﬁce.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

§ 11.805 - 11.900 [Reserved]

§ 11.901 Savings clause.

(a) A disciplinary proceeding based on conduct

engaged in prior to the effective date of these

regulations may be instituted subsequent to such

effective date, if such conduct would continue to

justify disciplinary sanctions under the provisions

of this part.

(b) No practitioner shall be subject to a

disciplinary proceeding under this part based on

conduct engaged in before the effective date hereof

if such conduct would not have been subject to

disciplinary action before such effective date.

[Added 78 FR 20180, Apr. 3, 2013, effective May

3, 2013]

R-376January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 11.805 - 11.900

Index II — RULES RELATING TO

REPRESENTATION OF OTHERS

BEFORE THE UNITED STATES

PATENT AND TRADEMARK

OFFICE

Address change .................................... 1.33 11.11

Advertising .................................... 11.701 11.705

Agents, registration of ................................ 11.6(b)

Agreements restricting practice .................. 11.506

Aliens .................. 11.6 11.7(b) 11.9(b) 11.14(c)

Applicant for patent, representation

of ........................................................ 1.31 11.10

Attorneys, recognition of to practice in trademark

cases ............................................................ 11.14

Attorneys, registration of to practice in patent

cases .................................................... 11.6 11.7

Breach of trust ............................................ 11.7(h)

Business transactions or relations with

client .................................................... 11.108(a)

Candidate for judicial ofﬁce ...................... 11.802

Candor of practitioner toward the tribunal... 11.303

Certiﬁcate of mailing ............................ 1.8 11.18

Certiﬁcation effect of signature .................... 11.18

Client-Practitioner relationship:

Communication .................................... 11.104

Competence .......................................... 11.101

Conﬁdentiality of information ............ 11.106

Conﬂict of interest; current

clients .................................... 11.107 11.108

Declining or terminating

representation .................................... 11.116

Diligence .............................................. 11.103

Diminished capacity client .................. 11.114

Fees ...................................................... 11.105

Former clients, duties to ...................... 11.109

Former judge, arbitrator, mediator or other

third-party neutral .............................. 11.112

Government employees ........................ 11.111

Imputation of conﬂicts of interests ...... 11.110

Organization as client .......................... 11.113

Safekeeping property ............................ 11.115

Sale of law practice .............................. 11.117

Scope of representation ........................ 11.102

Committee on Discipline .............................. 11.23

Communications:

Concerning a practitioner’s services.... 11.701

With client ............................................ 11.104

With person represented by a

practitioner .......................................... 11.402

With perspective clients ........................ 11.703

With unrepresented person .................. 11.403

Compensation for legal services ............ 11.108(f)

Competence ................................................ 11.101

Complaint instituting disciplinary

proceedings ................................................ 11.34

Concealment of material information ........ 11.304

Conduct prejudicial to the administration of

justice .................................................... 11.804(d)

Conﬁdentiality of information obtained through

representation ............................................ 11.106

Conﬂict of interest ........................ 11.107 11.113

Conviction of criminal offense.... 11.7(h)(1) 11.25

Deceit ...................................................... 11.804(c)

Decisions of the USPTO Director ...... 11.56 11.57

Declining representation ............................ 11.116

Deﬁnitions:

Agent ........................................................ 11.6

Attorney or lawyer .................................... 11.1

Belief or believes ...................................... 11.1

Conﬁrmed in writing ................................ 11.1

Conviction or convicted ............................ 11.1

Crime ........................................................ 11.1

Data sheet ................................................ 11.1

Disqualiﬁed .............................................. 11.1

Federal agency .......................................... 11.1

Federal program ...................................... 11.1

Firm or law ﬁrm ...................................... 11.1

Fraud or fraudulent .................................. 11.1

Good moral character and reputation ...... 11.1

Grievance .................................................. 11.1

Knowingly, known, or knows .................. 11.1

Law-related services ................................ 11.1

OED (Ofﬁce of Enrollment and

Discipline) .............................................. 11.1

OED Director .......................................... 11.1

OED Director’s representatives ................ 11.1

Ofﬁce ........................................................ 11.1

Partner ...................................................... 11.1

Person ...................................................... 11.1

Practitioner .............................................. 11.1

Proceeding before the Ofﬁce .................... 11.1

Reasonable or reasonably ........................ 11.1

January 2018R-377

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Reasonable belief or reasonably

believes .................................................. 11.1

Reasonably should know .......................... 11.1

Registration .............................................. 11.1

Respondent ............................................ 11.34

Roster ...................................................... 11.1

Screened .................................................. 11.1

Serious crime ............................................ 11.1

Serious evidence of rehabilitation ............ 11.1

State .......................................................... 11.1

Substantial ................................................ 11.1

Suspend or suspension ............................ 11.1

Tribunal .................................................... 11.1

United States ............................................ 11.1

USPTO Director ...................................... 11.1

Writing or written .................................... 11.1

Diligence of practitioner ............................ 11.103

Diminished capacity client .......................... 11.114

Direct contact with prospective clients ...... 11.703

Director of the Ofﬁce of Enrollment and Discipline:

Appointment ........................................ 11.2(a)

Duties .................................................. 11.2(b)

Petition regarding enrollment or

recognition ........................................ 11.2(c)

Petition regarding disciplinary

matters ................................................ 11.2(e)

Review of decisions of OED Director.. 11.2(d)

Discharge of attorney or agent by

client .................................................... 11.116(d)

Disciplinary proceedings and investigations:

Amendment of pleadings ...................... 11.45

Answer to complaint .............................. 11.36

Appeal to the USPTO Director .............. 11.55

Burden of proof ...................................... 11.49

Certiﬁcate of mailing ...................... 1.8 11.18

Committee on Discipline ........................ 11.23

Complaint .............................................. 11.34

Contested case ........................................ 11.38

Decision of the USPTO Director ............ 11.57

Depositions ............................................ 11.51

Discovery ................................................ 11.52

Dissemination of disciplinary

information .......................................... 11.59

Duties of disciplined or resigned

practitioner ............................................ 11.58

Evidence ................................................ 11.50

Exclusion on consent .............................. 11.27

Filing papers after complaint ﬁled ........ 11.41

Hearing ofﬁcer ...................................... 11.39

Hearings ................................................ 11.44

Incapacitated practitioners ...................... 11.28

Initial decision of hearing ofﬁcer .......... 11.54

Instituting disciplinary proceeding ........ 11.32

Investigations of violations of disciplinary rules

.............................................................. 11.22

Jurisdiction ............................................ 11.19

Motions .................................................. 11.43

Petition for reinstatement ...................... 11.60

Post hearing memorandum .................... 11.53

Reciprocal discipline .............................. 11.24

Reciprocal transfer ................................ 11.29

Reinstatement of suspended or excluded

practitioner ............................................ 11.60

Representative for OED

Director/respondent .............................. 11.40

Review of decision denying reinstatement of

practitioner .............................. 11.2(d) 11.57

Review of interlocutory orders by hearing

ofﬁcer .................................................. 11.39

Sanctions ................................................ 11.20

Serious crime, suspension and discipline based

on .......................................................... 11.25

Service of complaint .............................. 11.35

Service of papers .................................... 11.42

Settlement of complaint ........................ 11.26

Stays ...................................................... 11.39

Transfer to disability inactive status ...... 11.29

Warnings ................................................ 11.21

Disciplinary rule violation

Disclosure

of ...... 11.25 11.501 11.503 11.801 11.803

Discovery in disciplinary proceedings:

Depositions ............................................ 11.51

Discovery ................................................ 11.52

Evidence ................................................ 11.50

Motions ﬁled with hearing ofﬁcer .......... 11.43

Division of legal fees .............................. 11.105(e)

Excessive legal fees ................................ 11.105(a)

Failure to disclose material fact with regard to

registration .................................. 11.7(g) 11.801

Failure to notify client ................................ 11.104

False accusations .................................... 11.303(a)

False statements concerning ofﬁcials.... 11.802(a)

Fees:

Delinquency ................................ 1.21(a)(9)(i)

Petition to review decision of Director of

Enrollment and Discipline ............ 1.21(a)(5)

R-378January 2018

MANUAL OF PATENT EXAMINING PROCEDURE

Registration for admission to

examination .................................. 1.21(a)(1)

Registration to practice .................... 1.21(a)(2)

Reinstatement ............................ 1.21(a)(9)(ii)

Fields of practice and specialization .......... 11.704

Firm name, use of ...................................... 11.705

Foreigners ................ 11.6 11.7(b) 11.9(b) 11.14

Former clients, duties to .............................. 11.109

Former judge, arbitrator, mediator or other third-party

neutral ........................................................ 11.112

Former Patent and Trademark Ofﬁce

employees ........................ 11.7(d) 11.10 11.111

Fraud .............. 11.102(d) 11.401 11.801 11.804

Frivolous complaint .................................... 11.301

Funds of client, preserving identity of ........ 11.115

Gift, improperly bestowing .................... 11.108(c)

Government employees, registration of to practice

in patent cases ........................................ 11.10(e)

Government employees, representation of

clients ........................................................ 11.111

Illegal fees for services .......................... 11.105(c)

Impartiality of practitioner toward

tribunal ...................................................... 11.305

Imputation of conﬂicts of interests ............ 11.110

Incompetence .............................................. 11.101

Independent professional judgment, exercise

of .............................................................. 11.201

Inﬂuence by others than client .................... 11.203

Integrity of the legal profession, maintaining

of .................................................. 11.801 11.901

Judicial ofﬁce, candidate for ...................... 11.802

Law ﬁrms and associations:

Professional independence of a

practitioner .......................................... 11.504

Responsibilities of partners, managers and

supervisory practitioners .................... 11.501

Responsibilities of a subordinate

practitioner .......................................... 11.502

Responsibilities regarding law-related

services .............................................. 11.507

Responsibilities regarding non-practitioner

assistance ............................................ 11.503

Restrictions on right to practice .......... 11.506

Unauthorized practice of law .............. 11.505

Law-related services, responsibilities

regarding .................................................. 11.507

Legal fees:

Division of ...................................... 11.105(e)

Sharing of ............................................ 11.504

Legal services:

Advertising .......................................... 11.702

Communications concerning a practitioner’s

services .............................................. 11.701

Fields of practice and specialization.... 11.704

Names and letterhead of ﬁrm .............. 11.507

Perspective clients, direct contact

with .................................................... 11.703

Letterheads, use of ...................................... 11.507

Limited recognition to practice in patent

matters .......................................................... 11.9

Malpractice, limiting client’s liability.... 11.108(h)

Materially false statements in application for

registration ................................................ 11.801

Misappropriation of funds .......................... 11.115

Misconduct .................................................. 11.804

Misconduct, reporting of ............................ 11.803

Misrepresentations ........................ 11.401 11.801

Non-practitioner assistance,

responsibilities .......................................... 11.503

Oath requirement ............................................ 11.8

Organization as client ................................ 11.113

Partners, responsibilities of ........................ 11.501

Perspective clients, direct contact with ...... 11.703

Petitions:

Reinstatement ........................................ 11.60

Review of ﬁnal decision of USPTO

Director ................................................ 11.57

Review decision of Director of Enrollment and

Discipline .......................................... 11.2(d)

Suspension of rules .................................. 11.3

Practitioner acting as counselor:

Advising client .................................... 11.201

Evaluation for use by third persons ...... 11.203

Serving as neutral party ........................ 11.204

Practitioner acting as advocate:

January 2018R-379

CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Advocate in nonadjudicative

proceedings ........................................ 11.309

Candor toward the tribunal .................. 11.303

Expediting proceedings ........................ 11.302

Fairness to opposing party and

counsel ................................................ 11.304

Impartiality and decorum of the

tribunal ................................................ 11.305

Meritorious claims and contentions.... 11.301

Practitioner as a witness ...................... 11.307

Trial publicity ...................................... 11.306

Preserve secrets and conﬁdence of

client ............................................ 11.106 11.109

Property of client ........................................ 11.115

Proprietary interest in subject matter .......... 11.108

Recognition to practice before the Patent and

Trademark Ofﬁce:

Agents ................ 11.5 11.6(b) 11.7 11.14(b)

Aliens ............ 11.6 11.7(b), 11.9(b), 11.14(c)

Attorneys ................ 11.5 11.6(a) 11.7 11.14

Change of address, requirement to notify

Director ............................................ 11.11(a)

Examination for registration in patent

cases ........................................................ 11.7

Examination fees ...................... 1.21(a), 11.7

Foreigners.... 11.6, 11.7(b), 11.9(b) 11.14(c)

Former Patent and Trademark Ofﬁce

employees .............................. 11.7(d) 11.10

Government employees ...................... 11.10(e)

Limited recognition in patent cases .......... 11.9

Non-lawyers, recognition in trademark

cases ................................................ 11.14(b)

Recognition for representation ...... 1.34 11.14

Refusal to recognize practitioner ............ 11.15

cases ........................................................ 11.5

Registration fee .................................... 1.21(a)

Registration number ................................ 1.34

Removal of attorneys and agents from the

Representation by registered attorney or agent in

patent cases ............................................ 1.31

Requirements for registration .................. 11.7

Review of Director’s decision refusing

registration ........................................ 11.2(d)

Trademark cases .................................... 11.14

Unauthorized representation by an

agent .................................................... 11.10

Records, property and funds of client, maintaining

of .............................................................. 11.115

Reinstatement of practitioner ........................ 11.60

Reporting misconduct of practitioners ........ 11.803

Safekeeping client’s property ...................... 11.115

Sale of law practice .................................... 11.117

Savings clause ............................................ 11.901

Sharing legal fees ........................................ 11.504

Signature and certiﬁcate of practitioner ........ 11.18

Solicitation .................................... 11.701 11.705

Statement concerning ofﬁcials, making

false ...................................................... 11.802(a)

Subordinate practitioner, responsibilities

of .............................................................. 11.502

Suspension of practitioner ................ 11.11 11.25

Suspension of rules ........................................ 11.3

Transactions with persons other than clients:

Communications with person represented by a

practitioner .......................................... 11.402

Respect for rights of third persons ...... 11.404

Truthfulness in statements to others.... 11.402

Unrepresented persons, dealing with.... 11.403

Unauthorized practice ................................ 11.505

Unrepresented persons, dealing with .......... 11.403

Violating duty of candor ............................ 11.303

Violation of disciplinary rule, misconduct... 11.804

Withdrawal from representation ................ 11.116

Witness, practitioner as .............................. 11.307

PART 41 — PRACTICE BEFORE THE PATENT

TRIAL AND APPEAL BOARD

Sec.

41.2 Deﬁnitions.

41.3 Petitions.

41.4 Timeliness.

41.5 Counsel.

41.6 Public availability of Board records.

41.7 Management of the record.

41.8 Mandatory notices.

41.9 Action by owner.

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MANUAL OF PATENT EXAMINING PROCEDURE

41.9 (pre-AIA) Action by owner.

41.10 Correspondence addresses.

41.11 Ex parte communications in inter partes

proceedings.

41.12 Citation of authority.

41.20 Fees.

General Provisions

41.1 Policy.

Ex Parte Appeals

41.30 Deﬁnitions.

41.31 Appeal to Board.

41.33 Amendments and afﬁdavits or other

Evidence after appeal.

41.35 Jurisdiction over appeal.

41.37 Appeal brief.

41.39 Examiner’s answer.

41.40 Tolling of time period to ﬁle a reply brief.

41.41 Reply brief.

41.43 [Removed]

41.45 Appeal forwarding fee.

41.47 Oral hearing.

41.50 Decisions and other actions by the Board.

41.52 Rehearing.

41.54 Action following decision.

Inter Partes Appeals

41.60 Deﬁnitions.

41.61 Notice of appeal and cross appeal to Board.

41.63 Amendments and afﬁdavits or other

evidence after appeal.

41.64 Jurisdiction over appeal in inter partes

reexamination.

41.66 Time for ﬁling briefs.

41.67 Appellant’s brief.

41.68 Respondent’s brief.

41.69 Examiner’s answer.

41.71 Rebuttal brief.

41.73 Oral hearing.

41.77 Decisions and other actions by the Board.

41.79 Rehearing.

41.81 Action following decision.

Contested Cases

41.100 Deﬁnitions.

41.101 Notice of proceeding.

41.102 Completion of examination.

41.103 Jurisdiction over involved ﬁles.

41.104 Conduct of contested cases.

41.106 Filing and service.

41.108 Lead counsel.

41.109 Access to and copies of Ofﬁce records.

41.110 Filing claim information.

41.120 Notice of basis for relief.

41.121 Motions.

41.122 Oppositions and replies.

41.123 Default ﬁling times.

41.124 Oral argument.

41.125 Decision on motions.

41.126 Arbitration.

41.127 Judgment.

41.128 Sanctions.

41.150 Discovery.

41.151 Admissibility.

41.152 Applicability of the Federal Rules of

Evidence.

41.153 Records of the Ofﬁce.

41.154 Form of evidence.

41.155 Objection; motion to exclude; motion in

limine.

41.156 Compelling testimony and production.

41.157 Taking testimony.

41.158 Expert testimony; tests and data.

Patent Interferences

41.200 Procedure; pendency.

41.201 Deﬁnitions.

41.202 Suggesting an interference.

41.203 Declaration.

41.204 Notice of basis for relief.

41.205 Settlement agreements.

41.206 Common interests in the invention.

41.207 Presumptions.

41.208 Content of substantive and responsive

motions.

Subpart A — General Provisions

§ 41.1 Policy.

(a) Scope. Part 41 governs appeals and

interferences before the Patent Trial and Appeal

Board. Sections 1.1 to 1.36 and 1.181 to 1.183 of

this title also apply to practice before the Board, as

do other sections of part 1 of this title that are

incorporated by reference into part 41.

(b) Construction. The provisions of Part 41

shall be construed to secure the just, speedy, and

January 2018R-381

§ 41.1CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

inexpensive resolution of every proceeding before

the Board.

and decorum in all proceedings before the Board,

including interactions with other parties.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000; para. (a) revised, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012]

§ 41.2 Deﬁnitions.

Unless otherwise clear from the context, the

following deﬁnitions apply to proceedings under

this part:

Afﬁdavit means afﬁdavit, declaration under § 1.68

of this title, or statutory declaration under 28 U.S.C.

1746. A transcript of an ex parte deposition may be

used as an afﬁdavit in a contested case.

Board means the Patent Trial and Appeal Board

and includes:

(1) For a ﬁnal Board action:

(i) In an appeal or contested case, a panel of

the Board.

(ii) In a proceeding under § 41.3, the Chief

Administrative Patent Judge or another ofﬁcial

acting under an express delegation from the Chief

Administrative Patent Judge.

(2) For non-ﬁnal actions, a Board member or

employee acting with the authority of the Board.

Board member means the Under Secretary of

Commerce for Intellectual Property and Director of

the United States Patent and Trademark Ofﬁce, the

Deputy Under Secretary of Commerce for

Intellectual Property and Deputy Director of the

United States Patent and Trademark Ofﬁce, the

Commissioner for Patents, the Commissioner for

Trademarks, and the administrative patent judges.

Contested case means a Board proceeding other

than an appeal under 35 U.S.C. 134 or a petition

under § 41.3. An appeal in an inter partes

reexamination is not a contested case.

Final means, with regard to a Board action, ﬁnal

for the purposes of judicial review. A decision is

ﬁnal only if:

(1) In a panel proceeding. The decision is

rendered by a panel, disposes of all issues with

regard to the party seeking judicial review, and does

not indicate that further action is required; and

(2) In other proceedings. The decision disposes

of all issues or the decision states it is ﬁnal.

Hearing means consideration of the issues of

record. Rehearing means reconsideration.

Ofﬁce means United States Patent and

Trademark Ofﬁce.

Panel means at least three Board members

acting in a panel proceeding.

Panel proceeding means a proceeding in which

ﬁnal action is reserved by statute to at least three

Board members, but includes a non-ﬁnal portion of

such a proceeding whether administered by a panel

or not.

Party, in this part, means any entity participating

in a Board proceeding, other than ofﬁcers and

employees of the Ofﬁce, including:

(1) An appellant;

(2) A participant in a contested case;

(3) A petitioner; and

(4) Counsel for any of the above, where

context permits.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; introductory text of the deﬁnition of

“Board” revised, 77 FR 46615, Aug. 6, 2012, effective

Sept. 16, 2012]

§ 41.3 Petitions.

(a) Deciding ofﬁcial. Petitions must be

addressed to the Chief Administrative Patent Judge.

A panel or an administrative patent judge may

certify a question of policy to the Chief

Administrative Patent Judge for decision. The Chief

Administrative Patent Judge may delegate authority

to decide petitions.

(b) Scope. This section covers petitions on

matters pending before the Board (§§ 41.35, 41.64,

41.103, and 41.205); otherwise, see §§ 1.181 to

1.183 of this title. The following matters are not

subject to petition:

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.2

(1) Issues committed by statute to a panel,

and

(2) In pending contested cases, procedural

issues. See § 41.121(a)(3) and § 41.125(c).

accompany any petition under this section except

no fee is required for a petition under this section

seeking supervisory review.

(d) Effect on proceeding. The ﬁling of a petition

does not stay the time for any other action in a Board

proceeding.

(e) Time for action.

(1) Except as otherwise provided in this part

or as the Board may authorize in writing, a party

may:

(i) File the petition within 14 days from

the date of the action from which the party is

requesting relief, and

(ii) File any request for reconsideration

of a petition decision within 14 days of the decision

on petition or such other time as the Board may set.

(2) A party may not ﬁle an opposition or a

reply to a petition without Board authorization.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (e)(1) revised, 69 FR 58260, Sept.

30, 2004, effective Sept. 30, 2004]

§ 41.4 Timeliness.

(a) Extensions of time. Extensions of time will

be granted only on a showing of good cause except

as otherwise provided by rule.

(b) Late ﬁlings. (1) A late ﬁling that results in

either an application becoming abandoned or a

reexamination prosecution becoming terminated

under §§ 1.550(d) or 1.957(b) of this title or limited

under § 1.957(c) of this title may be revived as set

forth in § 1.137 of this title.

(2) A late ﬁling that does not result in either

an application becoming abandoned or a

reexamination prosecution becoming terminated

under §§ 1.550(d) or 1.957(b) of this title or limited

under § 1.957(c) of this title will be excused upon

a showing of excusable neglect or a Board

determination that consideration on the merits would

be in the interest of justice.

before the Board, but does not apply to ﬁlings

related to Board proceedings before or after the

Board has jurisdiction, such as:

(1) Extensions during prosecution (see §

1.136 of this title),

(2) Filing of a brief or request for oral

hearing (see §§ 41.37, 41.41, 41.47, 41.67, 41.68,

41.71 and 41.73), or

(3) Seeking judicial review (see §§ 1.301 to

1.304 of this title).

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (b) revised, 72 FR 18892, Apr. 16,

2007, effective May 16, 2007]

§ 41.5 Counsel.

While the Board has jurisdiction:

(a) Appearance pro hac vice. The Board may

authorize a person other than a registered

practitioner to appear as counsel in a speciﬁc

proceeding.

(b) Disqualiﬁcation. (1) The Board may

disqualify counsel in a speciﬁc proceeding after

notice and an opportunity to be heard.

(2) A decision to disqualify is not ﬁnal for

the purposes of judicial review until certiﬁed by the

Chief Administrative Patent Judge.

from a proceeding before the Board unless the Board

authorizes such withdrawal. See § 11.116 of this

subchapter regarding conditions for withdrawal.

(d) Procedure. The Board may institute a

proceeding under this section on its own or a party

in a contested case may request relief under this

section.

(e) Referral to the Director of Enrollment

and Discipline. Possible violations of the

disciplinary rules in part 11 of this subchapter may

be referred to the Ofﬁce of Enrollment and

Discipline for investigation. See § 11.22 of this

subchapter.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (e) revised, 73 FR 47650, Aug. 14,

2008, effective Sept. 15, 2008; para. (c) revised, 78 FR

20180, Apr. 3, 2013, effective May 3, 2013]

January 2018R-383

§ 41.5CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 41.6 Public availability of Board records.

(a) Publication. (1) Generally. Any Board

action is available for public inspection without a

party’s permission if rendered in a ﬁle open to the

public pursuant to § 1.11 of this title or in an

application that has been published in accordance

with §§ 1.211 to 1.221 of this title. The Ofﬁce may

independently publish any Board action that is

available for public inspection.

(2) Determination of special circumstances.

Any Board action not publishable under paragraph

(a)(1) of this section may be published or made

available for public inspection if the Director

believes that special circumstances warrant

publication and a party does not, within two months

after being notiﬁed of the intention to make the

action public, object in writing on the ground that

the action discloses the objecting party’s trade secret

or other conﬁdential information and states with

speciﬁcity that such information is not otherwise

publicly available. If the action discloses such

information, the party shall identify the deletions in

the text of the action considered necessary to protect

the information. If the affected party considers that

the entire action must be withheld from the public

to protect such information, the party must explain

why. The party will be given time, not less than

twenty days, to request reconsideration and seek

court review before any contested portion of the

action is made public over its objection.

(b) Record of proceeding. (1) The record of a

Board proceeding is available to the public unless

a patent application not otherwise available to the

public is involved.

(2) Notwithstanding paragraph (b)(1) of this

section, after a ﬁnal Board action in or judgment in

a Board proceeding, the record of the Board

proceeding will be made available to the public if

any involved ﬁle is or becomes open to the public

under § 1.11 of this title or an involved application

is or becomes published under §§ 1.211 to 1.221 of

this title.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.7 Management of the record.

(a) The Board may expunge any paper directed

to a Board proceeding, or ﬁled while an application

or patent is under the jurisdiction of the Board, that

is not authorized under this part or in a Board order,

or that is ﬁled contrary to a Board order.

(b) A party may not ﬁle a paper previously ﬁled

in the same Board proceeding, not even as an exhibit

or appendix, without Board authorization or as

required by rule.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.8 Mandatory notices.

(a) In an appeal brief (§§ 41.37, 41.67, or

41.68) or at the initiation of a contested case (§

41.101), and within 20 days of any change during

the proceeding, a party must identify:

(1) Its real party-in-interest, and

(2) Each judicial or administrative

proceeding that could affect, or be affected by, the

Board proceeding.

(b) For contested cases, a party seeking judicial

review of a Board proceeding must ﬁle a notice with

the Board of the judicial review within 20 days of

the ﬁling of the complaint or the notice of appeal.

The notice to the Board must include a copy of the

complaint or notice of appeal. See also §§ 1.301 to

1.304 of this title.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.9 Action by owner.

[Editor Note: Para. (a) below is applicable only to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after September 16, 2012*]

(a) Entire interest. An owner of the entire

interest in an application or patent involved in a

Board proceeding may act in the proceeding to the

exclusion of the inventor (see §§ 3.71 and 3.73 of

this title).

(b) Part interest. An owner of a part interest in

an application or patent involved in a Board

proceeding may petition to act in the proceeding to

the exclusion of an inventor or a co-owner. The

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.6

petition must show the inability or refusal of an

inventor or co-owner to prosecute the proceeding

or other cause why it is in the interest of justice to

permit the owner of a part interest to act in the

proceeding. An order granting the petition may set

conditions on the actions of the parties during the

proceeding.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (a) revised, 77 FR 48776, Aug. 14,

2012, effective Sept. 16, 2012]

[*The revisions to para. (a) effective Sept. 16, 2012

are applicable only to patent applications ﬁled under 35

U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See §

41.9 (pre-AIA) for the rule otherwise in effect.]

§ 41.9 (pre-AIA) Action by owner.

[Editor Note: Para. (a) below is not applicable to

patent applications ﬁled under 35 U.S.C. 111(a) or 363

on or after Sept. 16, 2012*]

(a) Entire interest. An owner of the entire

interest in an application or patent involved in a

Board proceeding may act in the proceeding to the

exclusion of the inventor (see 3.73(b) of this title).

(b) Part interest. An owner of a part interest in

an application or patent involved in a Board

proceeding may petition to act in the proceeding to

the exclusion of an inventor or a co-owner. The

petition must show the inability or refusal of an

inventor or co-owner to prosecute the proceeding

or other cause why it is in the interest of justice to

permit the owner of a part interest to act in the

proceeding. An order granting the petition may set

conditions on the actions of the parties during the

proceeding.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

[*See § 41.9 for more information and for § 41.9(a)

applicable to patent applications ﬁled under 35 U.S.C.

111(a) or 363 on or after Sept. 16, 2012]

§ 41.10 Correspondence addresses.

Except as the Board may otherwise direct,

(a) Appeals. Correspondence in an application

or a patent involved in an appeal (subparts B and C

of this part) during the period beginning when an

appeal docketing notice is issued and ending when

a decision has been rendered by the Board, as well

as any request for rehearing of a decision by the

Board, shall be mailed to: Patent Trial and Appeal

Board, United States Patent and Trademark Ofﬁce,

PO Box 1450, Alexandria, Virginia 22313–1450.

Notices of appeal, appeal briefs, reply briefs,

requests for oral hearing, as well as all other

correspondence in an application or a patent

involved in an appeal to the Board for which an

address is not otherwise speciﬁed, should be

addressed as set out in § 1.1(a)(1)(i) of this title.

(b) Interferences. Mailed correspondence in

interference (subpart D of this part) shall be sent to

Mail Stop INTERFERENCE, Patent Trial and

Appeal Board, United States Patent and Trademark

Ofﬁce, PO Box 1450, Alexandria, Virginia

22313–1450.

proceedings (part 42 of this title) are governed by

§ 42.6(b) of this title.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; revised, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012]

§ 41.11 Ex parte communications in inter

partes proceedings.

An ex parte communication about an inter partes

reexamination (subpart C of this part) or about a

contested case (subparts D and E of this part) with

a Board member, or with a Board employee assigned

to the proceeding, is not permitted.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.12 Citation of authority.

(a) For any United States Supreme Court

decision, citation to the United States Reports is

preferred.

(b) For any decision other than a United States

Supreme Court decision, citation to the West

Reporter System is preferred.

citations whenever a speciﬁc holding or portion of

an authority is invoked.

(d) Non-binding authority should be used

sparingly. If the authority is not an authority of the

Ofﬁce and is not reproduced in the United States

January 2018R-385

§ 41.12CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Reports or the West Reporter System, a copy of the

authority should be provided.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011,

effective Jan. 23, 2012]

§ 41.20 Fees.

(a) Petition fee. The fee for ﬁling a petition

under this part is:.......................................$400.00.

(b) Appeal fees.

(1) For ﬁling a notice of appeal from the

examiner to the Patent Trial and Appeal Board:

By a micro entity (§ 1.29)..........$200.00

By a small entity (§ 1.27(a))........400.00

By other than a small or micro

entity.............................................................800.00

(2)

(i) For ﬁling a brief in support of an

appeal in an application or ex parte reexamination

proceeding:....................................................$0.00.

(ii) In addition to the fee for ﬁling a

notice of appeal, for ﬁling a brief in support of an

appeal in an inter partes reexamination proceeding:

By a micro entity (§ 1.29)....$500.00

By a small entity (§

1.27(a))......................................................1,000.00

By other than a small or micro

entity..........................................................2,000.00

(3) For ﬁling a request for an oral hearing

before the Board in an appeal under 35 U.S.C. 134:

By a micro entity (§ 1.29)..........$325.00

By a small entity (§ 1.27(a).........650.00

By other than a small or micro

entity..........................................................1,300.00

(4) In addition to the fee for ﬁling a notice

of appeal, for forwarding an appeal in an application

or ex parte reexamination proceeding to the Board:

By a micro entity (§ 1.29 of this

chapter).......................................................$560.00

By a small entity (§ 1.27(a) of this

chapter)......................................................1,120.00

By other than a small or micro

entity..........................................................2,240.00

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; paras. (b)(1) through (b)(3) revised, 69

FR 52604, Aug. 27, 2004, effective Oct. 1, 2004; para.

(b)(3) corrected, 69 FR 55505, Sept. 15, 2004, effective

Oct. 1, 2004; para. (a) revised, 69 FR 56481, Sept. 21,

2004, effective Nov. 22, 2004; para. (b) revised, 70 FR

3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (b)(1)

through (b)(3) revised, 72 FR 46899, Aug. 22, 2007,

effective Sept. 30, 2007; para. (b) revised, 73 FR 47534,

Aug. 14, 2008, effective Oct. 2, 2008; para. (b) revised,

77 FR 54360, Sept. 5, 2012, effective Oct. 5, 2012;

revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19,

2013; para. (b)(4) revised, 82 FR 52780, Nov. 14, 2017,

effective Jan. 16, 2018]

Subpart B — Ex Parte Appeals

§ 41.30 Deﬁnitions.

In addition to the deﬁnitions in § 41.2, the following

deﬁnitions apply to proceedings under this subpart

unless otherwise clear from the context:

Applicant means either the applicant in a national

application for a patent or the applicant in an

application for reissue of a patent.

Evidence means something (including testimony,

documents and tangible objects) that tends to prove

or disprove the existence of an alleged fact, except

that for the purpose of this subpart Evidence does

not include dictionaries, which may be cited before

the Board.

Owner means the owner of the patent undergoing

ex parte reexamination under § 1.510 of this title.

Proceeding means either a national application for

a patent, an application for reissue of a patent, an

ex parte reexamination proceeding, or a trial before

the Patent Trial and Appeal Board. Appeal to the

Board in an inter partes reexamination proceeding

is controlled by subpart C of this part.

Record means the items listed in the content listing

of the Image File Wrapper of the ofﬁcial ﬁle of the

application or reexamination proceeding on appeal

or the ofﬁcial ﬁle of the Ofﬁce if other than the

Image File Wrapper, excluding amendments,

Evidence, and other documents that were not

entered. In the case of an issued patent being

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.20

reissued or reexamined, the Record further includes

the Record of the patent being reissued or

reexamined.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; deﬁnitions of “evidence” and “record”

added, 76 FR 72270, Nov. 22, 2011, effective Jan. 23,

2012; deﬁnition of “proceeding” revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012]

§ 41.31 Appeal to Board.

(a) Who may appeal and how to ﬁle an appeal.

An appeal is taken to the Board by ﬁling a notice

of appeal.

(1) Every applicant, any of whose claims

has been twice rejected, may appeal from the

decision of the examiner to the Board by ﬁling a

notice of appeal accompanied by the fee set forth

in § 41.20(b)(1) within the time period provided

under § 1.134 of this title for reply.

(2) Every owner of a patent under ex parte

reexamination ﬁled under § 1.510 of this title before

November 29, 1999, any of whose claims has been

twice rejected, may appeal from the decision of the

examiner to the Board by ﬁling a notice of appeal

accompanied by the fee set forth in § 41.20(b)(1)

within the time period provided under § 1.134 of

this title for reply.

(3) Every owner of a patent under ex parte

reexamination ﬁled under § 1.510 of this title on or

after November 29, 1999, any of whose claims has

been ﬁnally (§ 1.113 of this title) rejected, may

appeal from the decision of the examiner to the

Board by ﬁling a notice of appeal accompanied by

the fee set forth in § 41.20(b)(1) within the time

period provided under § 1.134 of this title for reply.

(b) The signature requirements of §§ 1.33 and

11.18(a) of this title do not apply to a notice of

appeal ﬁled under this section.

taken from the rejection of all claims under rejection

unless cancelled by an amendment ﬁled by the

applicant and entered by the Ofﬁce. Questions

relating to matters not affecting the merits of the

invention may be required to be settled before an

appeal can be considered.

(d) The time periods set forth in paragraphs

(a)(1) through (a)(3) of this section are extendable

under the provisions of § 1.136 of this title for patent

applications and § 1.550(c) of this title for ex parte

reexamination proceedings.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (a) introductory text, para. (b), and

para. (c) ﬁrst sentence revised, 76 FR 72270, Nov. 22,

2011, effective Jan. 23, 2012]

§ 41.33 Amendments and afﬁdavits or other

Evidence after appeal.

(a) Amendments ﬁled after the date of ﬁling an

appeal pursuant to § 41.31(a)(1) through (a)(3) and

prior to the date a brief is ﬁled pursuant to § 41.37

may be admitted as provided in § 1.116 of this title.

(b) Amendments ﬁled on or after the date of

ﬁling a brief pursuant to § 41.37 may be admitted:

(1) To cancel claims, where such

cancellation does not affect the scope of any other

pending claim in the proceeding, or

(2) To rewrite dependent claims into

independent form.

ﬁling an appeal pursuant to § 41.31(a)(1) through

(a)(3) will not be admitted except as permitted by

§§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).

(d)(1) An afﬁdavit or other Evidence ﬁled

after the date of ﬁling an appeal pursuant to §

41.31(a)(1) through (a)(3) and prior to the date of

ﬁling a brief pursuant to § 41.37 may be admitted

if the examiner determines that the afﬁdavit or other

Evidence overcomes all rejections under appeal and

that a showing of good and sufﬁcient reasons why

the afﬁdavit or other Evidence is necessary and was

not earlier presented has been made.

(2) All other afﬁdavits or other Evidence

ﬁled after the date of ﬁling an appeal pursuant to §

41.31(a)(1) through (a)(3) will not be admitted

except as permitted by §§ 41.39(b)(1),

41.50(a)(2)(i), and 41.50(b)(1).

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; section heading and paras. (c) and (d)

revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23,

2012]

§ 41.35 Jurisdiction over appeal.

(a) Beginning of jurisdiction. Jurisdiction over

the proceeding passes to the Board upon the ﬁling

January 2018R-387

§ 41.35CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

of a reply brief under § 41.41 or the expiration of

the time in which to ﬁle such a reply brief,

whichever is earlier.

(b) End of jurisdiction. The jurisdiction of the

Board ends when:

(1) The Director or the Board enters a

remand order (see §§ 41.35(c), 41.35(e), and

41.50(a)(1)),

(2) The Board enters a ﬁnal decision (see §

41.2) and judicial review is sought or the time for

seeking judicial review has expired,

(3) An express abandonment which complies

with § 1.138 of this title is recognized,

(4) A request for continued examination is

ﬁled which complies with § 1.114 of this title,

(5) Appellant fails to take any required

action under §§ 41.39(b), 41.50(a)(2), 41.50(b), or

41.50(d), and the Board enters an order of dismissal,

(6) Appellant reopens prosecution pursuant

to § 41.40(b) or in response to a new ground of

rejection entered in a decision of the Board (see §

41.50(b)(1)).

the entry of a decision on the appeal by the Board

(see § 41.50), the Director may sua sponte order

the proceeding remanded to the examiner.

(d) Documents ﬁled during Board’s

jurisdiction. Except for petitions authorized by this

part, consideration of any information disclosure

statement or petition ﬁled while the Board possesses

jurisdiction over the proceeding will be held in

abeyance until the Board’s jurisdiction ends.

(e) Administrative remands ordered by the

Board. If, after receipt and review of the proceeding,

the Board determines that the ﬁle is not complete

or is not in compliance with the requirements of this

subpart, the Board may relinquish jurisdiction to the

examiner or take other appropriate action to permit

completion of the ﬁle.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011,

effective Jan. 23, 2012]

§ 41.37 Appeal brief.

(a) Timing. Appellant must ﬁle a brief under

this section within two months from the date of

ﬁling the notice of appeal under § 41.31. The appeal

brief fee in an application or ex parte reexamination

proceeding is $0.00, but if the appeal results in an

examiner’s answer, the appeal forwarding fee set

forth in § 41.20(b)(4) must be paid within the time

period speciﬁed in § 41.45 to avoid dismissal of an

appeal.

(b) Failure to ﬁle a brief. On failure to ﬁle the

brief within the period speciﬁed in paragraph (a) of

this section, the appeal will stand dismissed.

(1) Except as otherwise provided in this

paragraph, the brief shall contain the following items

under appropriate headings and in the order

indicated in paragraphs (c)(1)(i) through (v) of this

section, except that a brief ﬁled by an appellant who

is not represented by a registered practitioner need

only substantially comply with paragraphs (c)(1)(i),

(c)(1)(ii), (c)(1)(iv), and (c)(1)(v) of this section:

(i) Real party in interest. A statement

identifying by name the real party in interest at the

time the appeal brief is ﬁled, except that such

statement is not required if the named inventor or

inventors are themselves the real party in interest.

If an appeal brief does not contain a statement of

the real party in interest, the Ofﬁce may assume that

the named inventor or inventors are the real party

in interest.

(ii) Related appeals, interferences, and

trials. A statement identifying by application, patent,

appeal, interference, or trial number all other prior

and pending appeals, interferences, trials before the

Board, or judicial proceedings (collectively, "related

cases") which satisfy all of the following conditions:

involve an application or patent owned by the

appellant or assignee, are known to appellant, the

appellant’s legal representative, or assignee, and

may be related to, directly affect or be directly

affected by or have a bearing on the Board’s

decision in the pending appeal, except that such

statement is not required if there are no such related

cases. If an appeal brief does not contain a statement

of related cases, the Ofﬁce may assume that there

are no such related cases.

R-388January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 41.37

(iii) Summary of claimed subject matter.

A concise explanation of the subject matter deﬁned

in each of the rejected independent claims, which

shall refer to the speciﬁcation in the Record by page

and line number or by paragraph number, and to the

drawing, if any, by reference characters. For each

rejected independent claim, and for each dependent

claim argued separately under the provisions of

paragraph (c)(1)(iv) of this section, if the claim

contains a means plus function or step plus function

recitation as permitted by 35 U.S.C. 112(f), then the

concise explanation must identify the structure,

material, or acts described in the speciﬁcation in the

Record as corresponding to each claimed function

with reference to the speciﬁcation in the Record by

page and line number or by paragraph number, and

to the drawing, if any, by reference characters.

Reference to the patent application publication does

not satisfy the requirements of this paragraph.

(iv) Argument. The arguments of

appellant with respect to each ground of rejection,

and the basis therefor, with citations of the statutes,

regulations, authorities, and parts of the Record

relied on. The arguments shall explain why the

examiner erred as to each ground of rejection

contested by appellant. Except as provided for in

§§ 41.41, 41.47 and 41.52, any arguments or

authorities not included in the appeal brief will be

refused consideration by the Board for purposes of

the present appeal. Each ground of rejection

contested by appellant must be argued under a

separate heading, and each heading shall reasonably

identify the ground of rejection being contested (e.g.,

by claim number, statutory basis, and applied

reference, if any). For each ground of rejection

applying to two or more claims, the claims may be

argued separately (claims are considered by

appellant as separately patentable), as a group (all

claims subject to the ground of rejection stand or

fall together), or as a subgroup (a subset of the

claims subject to the ground of rejection stand or

fall together). When multiple claims subject to the

same ground of rejection are argued as a group or

subgroup by appellant, the Board may select a single

claim from the group or subgroup and may decide

the appeal as to the ground of rejection with respect

to the group or subgroup on the basis of the selected

claim alone. Notwithstanding any other provision

of this paragraph, the failure of appellant to

separately argue claims which appellant has grouped

together shall constitute a waiver of any argument

that the Board must consider the patentability of any

grouped claim separately. Under each heading

identifying the ground of rejection being contested,

any claim(s) argued separately or as a subgroup shall

be argued under a separate subheading that identiﬁes

the claim(s) by number. A statement which merely

points out what a claim recites will not be considered

an argument for separate patentability of the claim.

(v) Claims appendix. An appendix

containing a copy of the claims involved in the

appeal.

(2) A brief shall not include any new or

non-admitted amendment, or any new or

non-admitted afﬁdavit or other Evidence. See §

1.116 of this title for treatment of amendments,

afﬁdavits or other evidence ﬁled after ﬁnal action

but before or on the same date of ﬁling an appeal

and § 41.33 for treatment of amendments, afﬁdavits

or other Evidence ﬁled after the date of ﬁling the

appeal. Review of an examiner’s refusal to admit

an amendment or Evidence is by petition to the

Director. See § 1.181 of this title.

(d) Notice of non-compliance. If a brief is ﬁled

which does not comply with all the requirements of

paragraph (c) of this section, appellant will be

notiﬁed of the reasons for non-compliance and given

a time period within which to ﬁle an amended brief.

If appellant does not, within the set time period, ﬁle

an amended brief that overcomes all the reasons for

non-compliance stated in the notiﬁcation, the appeal

will stand dismissed. Review of a determination of

non-compliance is by petition to the Chief

Administrative Patent Judge. See § 41.3.

(e) Extensions of time. The time periods set

forth in this section are extendable under the

provisions of § 1.136 of this title for patent

applications and § 1.550(c) of this title for ex parte

reexamination proceedings.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; headings of paragraphs (a), (b), (c), (d)

and (e) revised, para. (c) revised; para. (d) second

sentence revised and new third and fourth sentences

added, 76 FR 72270, Nov. 22, 2011, effective Jan. 23,

2012; paras. (c)(1)(ii)-(iii) revised, 77 FR 46615, Aug.

6, 2012, effective Sept. 16, 2012; paras. (a) and (b)

revised, 78 FR 4212, Jan. 18, 2013, effective Mar. 19,

2013; paras. (a) and (b) revised, 78 FR 17102, Mar. 20,

2013, effective Mar. 20, 2013]

January 2018R-389

§ 41.37CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 41.39 Examiner’s answer.

(a) Content of examiner’s answer. The primary

examiner may, within such time as may be directed

by the Director, furnish a written answer to the

appeal brief.

(1) An examiner’s answer is deemed to

incorporate all of the grounds of rejection set forth

in the Ofﬁce action from which the appeal is taken

(as modiﬁed by any advisory action and pre-appeal

brief conference decision), unless the examiner’s

answer expressly indicates that a ground of rejection

has been withdrawn.

(2) An examiner’s answer may include a

new ground of rejection. For purposes of the

examiner’s answer, any rejection that relies upon

any Evidence not relied upon in the Ofﬁce action

from which the appeal is taken (as modiﬁed by any

advisory action) shall be designated by the primary

examiner as a new ground of rejection. The

examiner must obtain the approval of the Director

to furnish an answer that includes a new ground of

rejection.

(b) Appellant’s response to new ground of

rejection. If an examiner’s answer contains a

rejection designated as a new ground of rejection,

appellant must within two months from the date of

the examiner’s answer exercise one of the following

two options to avoid sua sponte dismissal of the

appeal as to the claims subject to the new ground

of rejection:

(1) Reopen prosecution. Request that

prosecution be reopened before the primary

examiner by ﬁling a reply under § 1.111 of this title

with or without amendment or submission of

afﬁdavits (§§ 1.130 , 1.131 or 1.132 of this of this

[sic ] title) or other Evidence. Any amendment or

submission of afﬁdavits or other Evidence must be

relevant to the new ground of rejection. A request

that complies with this paragraph will be entered

and the application or the patent under ex parte

reexamination will be reconsidered by the examiner

under the provisions of § 1.112 of this title. Any

request that prosecution be reopened under this

paragraph will be treated as a request to withdraw

the appeal.

(2) Maintain appeal. Request that the appeal

be maintained by ﬁling a reply brief as set forth in

§ 41.41. Such a reply brief must address as set forth

in § 41.37(c)(1)(iv) each new ground of rejection

and should follow the other requirements of a brief

as set forth in § 41.37(c). A reply brief may not be

accompanied by any amendment, afﬁdavit (§§ 1.130

, 1.131 or 1.132 of this of this [ sic] title) or other

Evidence. If a reply brief ﬁled pursuant to this

section is accompanied by any amendment, afﬁdavit

or other Evidence, it shall be treated as a request

that prosecution be reopened before the primary

examiner under paragraph (b)(1) of this section.

§ 1.136(a) of this title for patent applications are not

applicable to the time period set forth in this section.

See § 1.136(b) of this title for extensions of time to

reply for patent applications and § 1.550(c) of this

title for extensions of time to reply for ex parte

reexamination proceedings.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (a) revised, heading added to (b)

introductory text, (b)(1) ﬁrst two sentences revised, (b)(2)

second, third and fourth sentences revised, and heading

added to para.(c), 76 FR 72270, Nov. 22, 2011, effective

Jan. 23, 2012]

§ 41.40 Tolling of time period to ﬁle a reply

brief.

(a) Timing. Any request to seek review of the

primary examiner’s failure to designate a rejection

as a new ground of rejection in an examiner’s

answer must be by way of a petition to the Director

under § 1.181 of this title ﬁled within two months

from the entry of the examiner’s answer and before

the ﬁling of any reply brief. Failure of appellant to

timely ﬁle such a petition will constitute a waiver

of any arguments that a rejection must be designated

as a new ground of rejection.

(b) Petition granted and prosecution reopened.

A decision granting a petition under § 1.181 to

designate a new ground of rejection in an examiner’s

answer will provide a two-month time period in

which appellant must ﬁle a reply under § 1.111 of

this title to reopen the prosecution before the

primary examiner. On failure to timely ﬁle a reply

under § 1.111, the appeal will stand dismissed.

A decision refusing to grant a petition under § 1.181

of this title to designate a new ground of rejection

in an examiner’s answer will provide a two-month

R-390January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 41.39

time period in which appellant may ﬁle only a single

reply brief under § 41.41.

(d) Withdrawal of petition and appeal

maintained. If a reply brief under § 41.41 is ﬁled

within two months from the date of the examiner’s

answer and on or after the ﬁling of a petition under

§ 1.181 to designate a new ground of rejection in

an examiner’s answer, but before a decision on the

petition, the reply brief will be treated as a request

to withdraw the petition and to maintain the appeal.

(e) Extensions of time. Extensions of time under

§ 1.136(a) of this title for patent applications are not

applicable to the time period set forth in this section.

See § 1.136(b) of this title for extensions of time to

reply for patent applications and § 1.550(c) of this

title for extensions of time to reply for ex parte

reexamination proceedings.

[Added, 76 FR 72270, Nov. 22, 2011, effective

Jan. 23, 2012]

§ 41.41 Reply brief.

(a) Timing. Appellant may ﬁle only a single

reply brief to an examiner’s answer within the later

of two months from the date of either the examiner’s

answer, or a decision refusing to grant a petition

under § 1.181 of this title to designate a new ground

of rejection in an examiner’s answer.

(b) Content.

(1) A reply brief shall not include any new

or non-admitted amendment, or any new or

non-admitted afﬁdavit or other Evidence. See §

1.116 of this title for amendments, afﬁdavits or other

evidence ﬁled after ﬁnal action but before or on the

same date of ﬁling an appeal and § 41.33 for

amendments, afﬁdavits or other Evidence ﬁled after

the date of ﬁling the appeal.

(2) Any argument raised in the reply brief

which was not raised in the appeal brief, or is not

responsive to an argument raised in the examiner’s

answer, including any designated new ground of

rejection, will not be considered by the Board for

purposes of the present appeal, unless good cause

is shown.

§ 1.136(a) of this title for patent applications are not

applicable to the time period set forth in this section.

See § 1.136(b) of this title for extensions of time to

reply for patent applications and § 1.550(c) of this

title for extensions of time to reply for ex parte

reexamination proceedings.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; paras. (a) and (b) revised and heading

added to (c), 76 FR 72270, Nov. 22, 2011, effective Jan.

23, 2012]

§ 41.43 [Removed]

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; removed, 76 FR 72270, Nov. 22, 2011,

effective Jan. 23, 2012]

§ 41.45 Appeal forwarding fee.

(a) Timing. Appellant in an application or ex

parte reexamination proceeding must pay the fee

set forth in § 41.20(b)(4) within the later of two

months from the date of either the examiner’s

answer, or a decision refusing to grant a petition

under § 1.181 of this chapter to designate a new

ground of rejection in an examiner’s answer.

(b) Failure to pay appeal forwarding fee. On

failure to pay the fee set forth in § 41.20(b)(4) within

the period speciﬁed in paragraph (a) of this section,

the appeal will stand dismissed.

§ 1.136(a) of this title for patent applications are not

applicable to the time period set forth in this section.

See § 1.136(b) of this title for extensions of time to

reply for patent applications and § 1.550(c) of this

title for extensions of time to reply for ex parte

reexamination proceedings.

[Added, 78 FR 4212, Jan. 18, 2013, effective Mar.

19, 2013; revised 78 FR 17102, Mar. 20, 2013, effective

Mar. 20, 2013]

§ 41.47 Oral hearing.

(a) An oral hearing should be requested only in

those circumstances in which appellant considers

such a hearing necessary or desirable for a proper

presentation of the appeal. An appeal decided on

the briefs without an oral hearing will receive the

same consideration by the Board as appeals decided

after an oral hearing.

(b) If appellant desires an oral hearing, appellant

must ﬁle, as a separate paper captioned "REQUEST

FOR ORAL HEARING," a written request for such

hearing accompanied by the fee set forth in §

January 2018R-391

§ 41.47CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

41.20(b)(3) within two months from the date of the

examiner’s answer or on the date of ﬁling of a reply

brief, whichever is earlier.

been timely ﬁled by appellant as required by

paragraph (b) of this section, the appeal will be

assigned for consideration and decision on the briefs

without an oral hearing.

(d) If appellant has complied with all the

requirements of paragraph (b) of this section, a date

for the oral hearing will be set, and due notice

thereof given to appellant. If an oral hearing is held,

an oral argument may be presented by, or on behalf

of, the primary examiner if considered desirable by

either the primary examiner or the Board. A hearing

will be held as stated in the notice, and oral

argument will ordinarily be limited to twenty

minutes for appellant and ﬁfteen minutes for the

primary examiner unless otherwise ordered.

(e)(1) Appellant will argue ﬁrst and may

reserve time for rebuttal. At the oral hearing,

appellant may only rely on Evidence that has been

previously entered and considered by the primary

examiner and present argument that has been relied

upon in the brief or reply brief except as permitted

by paragraph (e)(2) of this section. The primary

examiner may only rely on argument and Evidence

relied upon in an answer except as permitted by

paragraph (e)(2) of this section.

(2) Upon a showing of good cause, appellant

and/or the primary examiner may rely on a new

argument based upon a recent relevant decision of

either the Board or a Federal Court.

(f) Notwithstanding the submission of a request

for oral hearing complying with this rule, if the

Board decides that a hearing is not necessary, the

Board will so notify appellant.

(g) Extensions of time under § 1.136(a) of this

title for patent applications are not applicable to the

time periods set forth in this section. See § 1.136(b)

of this title for extensions of time to reply for patent

applications and § 1.550(c) of this title for

extensions of time to reply for ex parte

reexamination proceedings.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (b) revised and (e)(1) second and

third sentences revised, 76 FR 72270, Nov. 22, 2011,

effective Jan. 23, 2012]

§ 41.50 Decisions and other actions by the

Board.

(a)(1) Afﬁrmance and reversal. The Board,

in its decision, may afﬁrm or reverse the decision

of the examiner in whole or in part on the grounds

and on the claims speciﬁed by the examiner. The

afﬁrmance of the rejection of a claim on any of the

grounds speciﬁed constitutes a general afﬁrmance

of the decision of the examiner on that claim, except

as to any ground speciﬁcally reversed. The Board

may also remand an application to the examiner.

(2) If a substitute examiner’s answer is

written in response to a remand by the Board for

further consideration of a rejection pursuant to

paragraph (a)(1) of this section, the appellant must

within two months from the date of the substitute

examiner’s answer exercise one of the following

two options to avoid sua sponte dismissal of the

appeal as to the claims subject to the rejection for

which the Board has remanded the proceeding:

(i) Reopen prosecution. Request that

prosecution be reopened before the examiner by

ﬁling a reply under § 1.111 of this title with or

without amendment or submission of afﬁdavits (§§

1.130 , 1.131 or 1.132 of this title) or other

Evidence. Any amendment or submission of

afﬁdavits or other Evidence must be relevant to the

issues set forth in the remand or raised in the

substitute examiner’s answer. A request that

complies with this paragraph (a) will be entered and

the application or the patent under ex parte

reexamination will be reconsidered by the examiner

under the provisions of § 1.112 of this title. Any

request that prosecution be reopened under this

paragraph will be treated as a request to withdraw

the appeal.

(ii) Maintain appeal. Request that the

appeal be maintained by ﬁling a reply brief as

provided in § 41.41. If such a reply brief is

accompanied by any amendment, afﬁdavit or other

Evidence, it shall be treated as a request that

prosecution be reopened before the examiner under

paragraph (a)(2)(i) of this section.

(b) New ground of rejection. Should the Board

have knowledge of any grounds not involved in the

appeal for rejecting any pending claim, it may

include in its opinion a statement to that effect with

its reasons for so holding, and designate such a

R-392January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 41.50

statement as a new ground of rejection of the claim.

A new ground of rejection pursuant to this paragraph

shall not be considered ﬁnal for judicial review.

When the Board enters such a non-ﬁnal decision,

the appellant, within two months from the date of

the decision, must exercise one of the following two

options with respect to the new ground of rejection

to avoid termination of the appeal as to the rejected

claims:

(1) Reopen prosecution. Submit an

appropriate amendment of the claims so rejected or

new Evidence relating to the claims so rejected, or

both, and have the matter reconsidered by the

examiner, in which event the prosecution will be

remanded to the examiner. The new ground of

rejection is binding upon the examiner unless an

amendment or new Evidence not previously of

Record is made which, in the opinion of the

examiner, overcomes the new ground of rejection

designated in the decision. Should the examiner

reject the claims, appellant may again appeal to the

Board pursuant to this subpart.

(2) Request rehearing. Request that the

proceeding be reheard under § 41.52 by the Board

upon the same Record. The request for rehearing

must address any new ground of rejection and state

with particularity the points believed to have been

misapprehended or overlooked in entering the new

ground of rejection and also state all other grounds

upon which rehearing is sought.

rejection. Any request to seek review of a panel’s

failure to designate a new ground of rejection in its

decision must be raised by ﬁling a request for

rehearing as set forth in § 41.52. Failure of appellant

to timely ﬁle such a request for rehearing will

constitute a waiver of any arguments that a decision

contains an undesignated new ground of rejection.

(d) Request for brieﬁng and information. The

Board may order appellant to additionally brief any

matter that the Board considers to be of assistance

in reaching a reasoned decision on the pending

appeal. Appellant will be given a time period within

which to respond to such an order. Failure to timely

comply with the order may result in the sua sponte

dismissal of the appeal.

(e) Remand not ﬁnal action. Whenever a

decision of the Board includes a remand, that

decision shall not be considered ﬁnal for judicial

review. When appropriate, upon conclusion of

proceedings on remand before the examiner, the

Board may enter an order otherwise making its

decision ﬁnal for judicial review.

(f) Extensions of time. Extensions of time under

§ 1.136(a) of this title for patent applications are not

applicable to the time periods set forth in this

section. See § 1.136(b) of this title for extensions

of time to reply for patent applications and §

1.550(c) of this title for extensions of time to reply

for ex parte reexamination proceedings.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011,

effective Jan. 23, 2012]

§ 41.52 Rehearing.

(a)(1) Appellant may ﬁle a single request

for rehearing within two months of the date of the

original decision of the Board. No request for

rehearing from a decision on rehearing will be

permitted, unless the rehearing decision so modiﬁed

the original decision as to become, in effect, a new

decision, and the Board states that a second request

for rehearing would be permitted. The request for

rehearing must state with particularity the points

believed to have been misapprehended or

overlooked by the Board. Arguments not raised, and

Evidence not previously relied upon, pursuant to §§

41.37, 41.41, or 41.47 are not permitted in the

request for rehearing except as permitted by

paragraphs (a)(2) through (a)(4) of this section.

When a request for rehearing is made, the Board

shall render a decision on the request for rehearing.

The decision on the request for rehearing is deemed

to incorporate the earlier opinion reﬂecting its

decision for appeal, except for those portions

speciﬁcally withdrawn on rehearing, and is ﬁnal for

the purpose of judicial review, except when noted

otherwise in the decision on rehearing.

(2) Appellant may present a new argument

based upon a recent relevant decision of either the

Board or a Federal Court.

(3) New arguments responding to a new

ground of rejection designated pursuant to §

41.50(b) are permitted.

(4) New arguments that the Board’s decision

contains an undesignated new ground of rejection

are permitted.

January 2018R-393

§ 41.52CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(b) Extensions of time under § 1.136(a) of this

title for patent applications are not applicable to the

time period set forth in this section. See § 1.136(b)

of this title for extensions of time to reply for patent

applications and § 1.550(c) of this title for

extensions of time to reply for ex parte

reexamination proceedings.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; (a)(1) fourth sentence, (a)(2) and (a)(3)

revised and (a)(4) added, 76 FR 72270, Nov. 22, 2011,

effective Jan. 23, 2012]

§ 41.54 Action following decision.

After decision by the Board, jurisdiction over an

application or patent under ex parte reexamination

proceeding passes to the examiner, subject to

appellant’s right of appeal or other review, for such

further action by appellant or by the examiner, as

the condition of the application or patent under ex

parte reexamination proceeding may require, to

carry into effect the decision.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011,

effective Jan. 23, 2012]

Subpart C — Inter Partes Appeals

§ 41.60 Deﬁnitions.

In addition to the deﬁnitions in § 41.2, the following

deﬁnitions apply to proceedings under this subpart

unless otherwise clear from the context:

Appellant means any party, whether the owner or

a requester, ﬁling a notice of appeal or cross appeal

under § 41.61. If more than one party appeals or

cross appeals, each appealing or cross appealing

party is an appellant with respect to the claims to

which his or her appeal or cross appeal is directed.

Filing means ﬁling with a certiﬁcate indicating

service of the document under § 1.903 of this title.

Owner means the owner of the patent undergoing

inter partes reexamination under § 1.915 of this

title.

Proceeding means an inter partes reexamination

proceeding. Appeal to the Board in an ex parte

reexamination proceeding is controlled by subpart

B of this part. An inter partes reexamination

proceeding is not a contested case subject to subpart

Requester means each party, other than the owner,

who requested that the patent undergo inter partes

reexamination under § 1.915 of this title.

Respondent means any requester responding under

§ 41.68 to the appellant’s brief of the owner, or the

owner responding under § 41.68 to the appellant’s

brief of any requester. No requester may be a

respondent to the appellant brief of any other

requester.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.61 Notice of appeal and cross appeal to

Board.

(a)(1) Upon the issuance of a Right of

Appeal Notice under § 1.953 of this title, the owner

may appeal to the Board with respect to the ﬁnal

rejection of any claim of the patent by ﬁling a notice

of appeal within the time provided in the Right of

Appeal Notice and paying the fee set forth in §

41.20(b)(1).

(2) Upon the issuance of a Right of Appeal

Notice under § 1.953 of this title, the requester may

appeal to the Board with respect to any ﬁnal decision

favorable to the patentability, including any ﬁnal

determination not to make a proposed rejection, of

any original, proposed amended, or new claim of

the patent by ﬁling a notice of appeal within the

time provided in the Right of Appeal Notice and

paying the fee set forth in § 41.20(b)(1).

(b)(1) Within fourteen days of service of a

requester’s notice of appeal under paragraph (a)(2)

of this section and upon payment of the fee set forth

in § 41.20(b)(1), an owner who has not ﬁled a notice

of appeal may ﬁle a notice of cross appeal with

respect to the ﬁnal rejection of any claim of the

patent.

(2) Within fourteen days of service of an

owner’s notice of appeal under paragraph (a)(1) of

this section and upon payment of the fee set forth

R-394January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 41.54

in § 41.20(b)(1), a requester who has not ﬁled a

notice of appeal may ﬁle a notice of cross appeal

with respect to any ﬁnal decision favorable to the

patentability, including any ﬁnal determination not

to make a proposed rejection, of any original,

proposed amended, or new claim of the patent.

proceeding must identify the appealed claim(s) and

must be signed by the owner, the requester, or a duly

authorized attorney or agent.

(d) An appeal or cross appeal, when taken, must

be taken from all the rejections of the claims in a

Right of Appeal Notice which the patent owner

proposes to contest or from all the determinations

favorable to patentability, including any ﬁnal

determination not to make a proposed rejection, in

a Right of Appeal Notice which a requester proposes

to contest. Questions relating to matters not affecting

the merits of the invention may be required to be

settled before an appeal is decided.

(e) The time periods for ﬁling a notice of appeal

or cross appeal may not be extended.

(f) If a notice of appeal or cross appeal is timely

ﬁled but does not comply with any requirement of

this section, appellant will be notiﬁed of the reasons

for non-compliance and given a non-extendable time

period within which to ﬁle an amended notice of

appeal or cross appeal. If the appellant does not then

ﬁle an amended notice of appeal or cross appeal

within the set time period, or ﬁles a notice which

does not overcome all the reasons for

non-compliance stated in the notiﬁcation of the

reasons for non-compliance, that appellant’s appeal

or cross appeal will stand dismissed.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.63 Amendments and afﬁdavits or other

evidence after appeal.

(a) Amendments ﬁled after the date of ﬁling an

appeal pursuant to § 41.61 canceling claims may be

admitted where such cancellation does not affect

the scope of any other pending claim in the

proceeding.

(b) All other amendments ﬁled after the date of

ﬁling an appeal pursuant to § 41.61 will not be

admitted except as permitted by § 41.77(b)(1).

date of ﬁling an appeal pursuant to § 41.61 will not

be admitted except as permitted by reopening

prosecution under § 41.77(b)(1).

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.64 Jurisdiction over appeal in inter

partes reexamination.

(a) Jurisdiction over the proceeding passes to

the Board upon transmittal of the ﬁle, including all

briefs and examiner’s answers, to the Board.

(b) If, after receipt and review of the proceeding,

the Board determines that the ﬁle is not complete

or is not in compliance with the requirements of this

subpart, the Board may relinquish jurisdiction to the

examiner or take other appropriate action to permit

completion of the ﬁle.

by the Board, the Director may sua sponte order the

proceeding remanded to the examiner.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.66 Time for ﬁling briefs.

(a) An appellant’s brief must be ﬁled no later

than two months from the latest ﬁling date of the

last-ﬁled notice of appeal or cross appeal or, if any

party to the proceeding is entitled to ﬁle an appeal

or cross appeal but fails to timely do so, no later

than two months from the expiration of the time for

ﬁling (by the last party entitled to do so) such notice

of appeal or cross appeal. The time for ﬁling an

appellant’s brief or an amended appellant’s brief

may not be extended.

(b) Once an appellant’s brief has been properly

ﬁled, any brief must be ﬁled by respondent within

one month from the date of service of the appellant’s

brief. The time for ﬁling a respondent’s brief or an

amended respondent’s brief may not be extended.

appellant’s and respondent’s briefs and may prepare

an examiner’s answer under § 41.69.

(d) Any appellant may ﬁle a rebuttal brief under

§ 41.71 within one month of the date of the

examiner’s answer. The time for ﬁling a rebuttal

January 2018R-395

§ 41.66CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

brief or an amended rebuttal brief may not be

extended.

(e) No further submission will be considered

and any such submission will be treated in

accordance with § 1.939 of this title.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.67 Appellant’s brief.

(a)(1) Appellant(s) may once, within time

limits for ﬁling set forth in § 41.66, ﬁle a brief and

serve the brief on all other parties to the proceeding

in accordance with § 1.903 of this title.

(2) The brief must be signed by the

appellant, or the appellant’s duly authorized attorney

or agent and must be accompanied by the requisite

fee set forth in § 41.20(b)(2).

(b) An appellant’s appeal shall stand dismissed

upon failure of that appellant to ﬁle an appellant’s

brief, accompanied by the requisite fee, within the

time allowed under § 41.66(a).

(c)(1) The appellant’s brief shall contain the

following items under appropriate headings and in

the order indicated in paragraphs (c)(1)(i) through

(c)(1)(xi) of this section.

(i) Real party in interest. A statement

identifying by name the real party in interest.

(ii) Related appeals, interferences, and

trials. A statement identifying by application, patent,

appeal or interference number all other prior and

pending appeals, interferences or judicial

proceedings known to appellant, the appellant’s

legal representative, or assignee which may be

related to, directly affect or be directly affected by

or have a bearing on the Board’s decision in the

pending appeal. Copies of any decisions rendered

by a court or the Board in any proceeding identiﬁed

under this paragraph must be included in an

appendix as required by paragraph (c)(1)(xi) of this

section.

(iii) Status of claims. A statement of the

status of all the claims in the proceeding (e.g.,

rejected, allowed or conﬁrmed, withdrawn, objected

to, canceled). If the appellant is the owner, the

appellant must also identify the rejected claims

whose rejection is being appealed. If the appellant

is a requester, the appellant must identify the claims

that the examiner has made a determination

favorable to patentability, which determination is

being appealed.

(iv) Status of amendments. A statement

of the status of any amendment ﬁled subsequent to

the close of prosecution.

(v) Summary of claimed subject matter.

A concise explanation of the subject matter deﬁned

in each of the independent claims involved in the

appeal, which shall refer to the speciﬁcation by

column and line number, and to the drawing(s), if

any, by reference characters. For each independent

claim involved in the appeal and for each dependent

claim argued separately under the provisions of

paragraph (c)(1)(vii) of this section, every means

plus function and step plus function as permitted by

35 U.S.C. 112(f), must be identiﬁed and the

structure, material, or acts described in the

speciﬁcation as corresponding to each claimed

function must be set forth with reference to the

speciﬁcation by page and line number, and to the

drawing, if any, by reference characters.

(vi) Issues to be reviewed on appeal. A

concise statement of each issue presented for review.

No new ground of rejection can be proposed by a

third party requester appellant, unless such ground

was withdrawn by the examiner during the

prosecution of the proceeding, and the third party

requester has not yet had an opportunity to propose

it as a third party requester proposed ground of

rejection.

(vii) Argument. The contentions of

appellant with respect to each issue presented for

review in paragraph (c)(1)(vi) of this section, and

the basis therefor, with citations of the statutes,

regulations, authorities, and parts of the record relied

on. Any arguments or authorities not included in

the brief permitted under this section or §§ 41.68

and 41.71 will be refused consideration by the

Board, unless good cause is shown. Each issue must

be treated under a separate heading. If the appellant

is the patent owner, for each ground of rejection in

the Right of Appeal Notice which appellant contests

and which applies to two or more claims, the claims

may be argued separately or as a group. When

multiple claims subject to the same ground of

rejection are argued as a group by appellant, the

Board may select a single claim from the group of

claims that are argued together to decide the appeal

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.67

with respect to the group of claims as to the ground

of rejection on the basis of the selected claim alone.

Notwithstanding any other provision of this

paragraph, the failure of appellant to separately

argue claims which appellant has grouped together

shall constitute a waiver of any argument that the

Board must consider the patentability of any grouped

claim separately. Any claim argued separately

should be placed under a subheading identifying the

claim by number. Claims argued as a group should

be placed under a subheading identifying the claims

by number. A statement which merely points out

what a claim recites will not be considered an

argument for separate patentability of the claim.

(viii) Claims appendix. An appendix

containing a copy of the claims to be reviewed on

appeal.

(ix) Evidence appendix. An appendix

containing copies of any evidence submitted

pursuant to §§ 1.130, 1.131, or 1.132 of this title or

of any other evidence entered by the examiner and

relied upon by appellant in the appeal, along with a

statement setting forth where in the record that

evidence was entered in the record by the examiner.

Reference to unentered evidence is not permitted in

the brief. See § 41.63 for treatment of evidence

submitted after appeal. This appendix may also

include copies of the evidence relied upon by the

examiner in any ground of rejection to be reviewed

on appeal.

(x) Related proceedings appendix. An

appendix containing copies of decisions rendered

by a court or the Board in any proceeding identiﬁed

pursuant to paragraph (c)(1)(ii) of this section.

(xi) Certiﬁcate of service. A certiﬁcation

that a copy of the brief has been served in its entirety

on all other parties to the reexamination proceeding.

The names and addresses of the parties served must

be indicated.

(2) A brief shall not include any new or

non-admitted amendment, or any new or

non-admitted afﬁdavit or other evidence. See §

1.116 of this title for amendments, afﬁdavits or other

evidence ﬁled after ﬁnal action but before or on the

same date of ﬁling an appeal and § 41.63 for

amendments, afﬁdavits or other evidence after the

date of ﬁling the appeal.

(d) If a brief is ﬁled which does not comply with

all the requirements of paragraph (a) and paragraph

reasons for non-compliance and given a

non-extendable time period within which to ﬁle an

amended brief. If appellant does not ﬁle an amended

brief within the set time period, or ﬁles an amended

brief which does not overcome all the reasons for

non-compliance stated in the notiﬁcation, that

appellant’s appeal will stand dismissed.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; paras. (c)(1)(ii) and (c)(1)(v) revised, 77

FR 46615, Aug. 6, 2012, effective Sept. 16, 2012]

§ 41.68 Respondent’s brief.

(a)(1) Respondent(s) in an appeal may once,

within the time limit for ﬁling set forth in § 41.66,

ﬁle a respondent brief and serve the brief on all

parties in accordance with § 1.903 of this title.

(2) The brief must be signed by the party, or

the party’s duly authorized attorney or agent, and

must be accompanied by the requisite fee set forth

in § 41.20(b)(2).

(3) The respondent brief shall be limited to

issues raised in the appellant brief to which the

respondent brief is directed.

(4) A requester’s respondent brief may not

address any brief of any other requester.

(b)(1) The respondent brief shall contain the

following items under appropriate headings and in

the order here indicated, and may include an

appendix containing only those portions of the

record on which reliance has been made.

(i) Real Party in Interest. A statement

identifying by name the real party in interest.

(ii) Related Appeals, Interferences, and

trials. A statement identifying by application, patent,

appeal, interference, or trial number all other prior

and pending appeals, interferences or judicial

proceedings known to respondent, the respondent’s

legal representative, or assignee which may be

related to, directly affect or be directly affected by

or have a bearing on the Board’s decision in the

pending appeal. Copies of any decisions rendered

by a court or the Board in any proceeding identiﬁed

under this paragraph must be included in an

appendix as required by paragraph (b)(1)(ix) of this

section.

January 2018R-397

§ 41.68CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(iii) Status of claims. A statement

accepting or disputing appellant’s statement of the

status of claims. If appellant’s statement of the status

of claims is disputed, the errors in appellant’s

statement must be speciﬁed with particularity.

(iv) Status of amendments. A statement

accepting or disputing appellant’s statement of the

status of amendments. If appellant’s statement of

the status of amendments is disputed, the errors in

appellant’s statement must be speciﬁed with

particularity.

(v) Summary of claimed subject matter.

A statement accepting or disputing appellant’s

summary of the subject matter deﬁned in each of

the independent claims involved in the appeal. If

appellant’s summary of the subject matter is

disputed, the errors in appellant’s summary must be

speciﬁed.

(vi) Issues to be reviewed on appeal. A

statement accepting or disputing appellant’s

statement of the issues presented for review. If

appellant’s statement of the issues presented for

review is disputed, the errors in appellant’s

statement must be speciﬁed. A counter statement

of the issues for review may be made. No new

ground of rejection can be proposed by a requester

respondent.

(vii) Argument. A statement accepting

or disputing the contentions of appellant with each

of the issues presented by the appellant for review.

If a contention of the appellant is disputed, the errors

in appellant’s argument must be speciﬁed, stating

the basis therefor, with citations of the statutes,

regulations, authorities, and parts of the record relied

on. Each issue must be treated under a separate

heading. An argument may be made with each of

the issues stated in the counter statement of the

issues, with each counter-stated issue being treated

under a separate heading.

(viii) Evidence appendix. An appendix

containing copies of any evidence submitted

pursuant to §§ 1.130, 1.131, or 1.132 of this title or

of any other evidence entered by the examiner and

relied upon by respondent in the appeal, along with

a statement setting forth where in the record that

evidence was entered in the record by the examiner.

Reference to unentered evidence is not permitted in

the respondent’s brief. See § 41.63 for treatment of

evidence submitted after appeal.

(ix) Related proceedings appendix. An

appendix containing copies of decisions rendered

by a court or the Board in any proceeding identiﬁed

pursuant to paragraph (b)(1)(ii) of this section.

(x) Certiﬁcate of service. A certiﬁcation

that a copy of the respondent brief has been served

in its entirety on all other parties to the

reexamination proceeding. The names and addresses

of the parties served must be indicated.

(2) A respondent brief shall not include any

new or non-admitted amendment, or any new or

non-admitted afﬁdavit or other evidence. See §

1.116 of this title for amendments, afﬁdavits or other

evidence ﬁled after ﬁnal action but before or on the

same date of ﬁling an appeal and § 41.63 for

amendments, afﬁdavits or other evidence ﬁled after

the date of ﬁling the appeal.

comply with all the requirements of paragraph (a)

and paragraph (b) of this section, respondent will

be notiﬁed of the reasons for non-compliance and

given a non-extendable time period within which

to ﬁle an amended brief. If respondent does not ﬁle

an amended respondent brief within the set time

period, or ﬁles an amended respondent brief which

does not overcome all the reasons for

non-compliance stated in the notiﬁcation, the

respondent brief and any amended respondent brief

by that respondent will not be considered.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (b)(1)(ii) revised, 77 FR 46615,

Aug. 6, 2012, effective Sept. 16, 2012]

§ 41.69 Examiner’s answer.

(a) The primary examiner may, within such time

as directed by the Director, furnish a written answer

to the owner’s and/or requester’s appellant brief or

respondent brief including, as may be necessary,

such explanation of the invention claimed and of

the references relied upon, the grounds of rejection,

and the reasons for patentability, including grounds

for not adopting any proposed rejection. A copy of

the answer shall be supplied to the owner and all

requesters. If the primary examiner determines that

the appeal does not comply with the provisions of

§§ 41.61, 41.66, 41.67 and 41.68 or does not relate

to an appealable action, the primary examiner shall

make such determination of record.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.69

(b) An examiner’s answer may not include a

new ground of rejection.

new determination not to make a proposed rejection

of a claim.

(d) Any new ground of rejection, or any new

determination not to make a proposed rejection,

must be made in an Ofﬁce action reopening

prosecution.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.71 Rebuttal brief.

(a) Within one month of the examiner’s answer,

any appellant may once ﬁle a rebuttal brief.

(b)(1) The rebuttal brief of the owner may

be directed to the examiner’s answer and/or any

respondent brief.

(2) The rebuttal brief of the owner shall not

include any new or non-admitted amendment, or an

afﬁdavit or other evidence. See § 1.116 of this title

for amendments, afﬁdavits or other evidence ﬁled

after ﬁnal action but before or on the same date of

ﬁling an appeal and § 41.63 for amendments,

afﬁdavits or other evidence ﬁled after the date of

ﬁling the appeal.

(c)(1) The rebuttal brief of any requester

may be directed to the examiner’s answer and/or

the respondent brief of the owner.

(2) The rebuttal brief of a requester may not

be directed to the respondent brief of any other

requester.

(3) No new ground of rejection can be

proposed by a requester.

(4) The rebuttal brief of a requester shall not

include any new or non-admitted afﬁdavit or other

evidence. See § 1.116(d) of this title for afﬁdavits

or other evidence ﬁled after ﬁnal action but before

or on the same date of ﬁling an appeal and §

41.63(c) for afﬁdavits or other evidence ﬁled after

the date of ﬁling the appeal.

(d) The rebuttal brief must include a certiﬁcation

that a copy of the rebuttal brief has been served in

its entirety on all other parties to the proceeding.

The names and addresses of the parties served must

be indicated.

(e) If a rebuttal brief is timely ﬁled under

paragraph (a) of this section but does not comply

with all the requirements of paragraphs (a) through

(d) of this section, appellant will be notiﬁed of the

reasons for non-compliance and provided with a

non-extendable period of one month within which

to ﬁle an amended rebuttal brief. If the appellant

does not ﬁle an amended rebuttal brief during the

one-month period, or ﬁles an amended rebuttal brief

which does not overcome all the reasons for

non-compliance stated in the notiﬁcation, that

appellant’s rebuttal brief and any amended rebuttal

brief by that appellant will not be considered.

[Added, 69 FR 4995 9, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.73 Oral hearing.

(a) An oral hearing should be requested only in

those circumstances in which an appellant or a

respondent considers such a hearing necessary or

desirable for a proper presentation of the appeal. An

appeal decided on the briefs without an oral hearing

will receive the same consideration by the Board as

an appeal decided after an oral hearing.

(b) If an appellant or a respondent desires an

oral hearing, he or she must ﬁle, as a separate paper

captioned “REQUEST FOR ORAL HEARING,” a

written request for such hearing accompanied by

the fee set forth in § 41.20(b)(3) within two months

after the date of the examiner’s answer. The time

for requesting an oral hearing may not be extended.

The request must include a certiﬁcation that a copy

of the request has been served in its entirety on all

other parties to the proceeding. The names and

addresses of the parties served must be indicated.

been timely ﬁled by appellant or respondent as

required by paragraph (b) of this section, the appeal

will be assigned for consideration and decision on

the briefs without an oral hearing.

(d) If appellant or respondent has complied with

all the requirements of paragraph (b) of this section,

a hearing date will be set, and notice given to the

owner and all requesters. If an oral hearing is held,

an oral argument may be presented by, or on behalf

of, the primary examiner if considered desirable by

either the primary examiner or the Board. The notice

shall set a non-extendable period within which all

requests for oral hearing shall be submitted by any

January 2018R-399

§ 41.73CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

other party to the appeal desiring to participate in

the oral hearing. A hearing will be held as stated in

the notice, and oral argument will be limited to thirty

minutes for each appellant or respondent who has

requested an oral hearing, and twenty minutes for

the primary examiner unless otherwise ordered. No

appellant or respondent will be permitted to

participate in an oral hearing unless he or she has

requested an oral hearing and submitted the fee set

forth in § 41.20(b)(3).

(e)(1) At the oral hearing, each appellant and

respondent may only rely on evidence that has been

previously entered and considered by the primary

examiner and present argument that has been relied

upon in the briefs except as permitted by paragraph

(e)(2) of this section. The primary examiner may

only rely on argument and evidence relied upon in

an answer except as permitted by paragraph (e)(2)

of this section. The Board will determine the order

of the arguments presented at the oral hearing.

(2) Upon a showing of good cause, appellant,

respondent and/or the primary examiner may rely

on a new argument based upon a recent relevant

decision of either the Board or a Federal Court.

(f) Notwithstanding the submission of a request

for oral hearing complying with this rule, if the

Board decides that a hearing is not necessary, the

Board will so notify the owner and all requesters.

[Added, 69 FR 4 9959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.77 Decisions and other actions by the

Board.

(a) The Patent Trial and Appeal Board, in its

decision, may afﬁrm or reverse each decision of the

examiner on all issues raised on each appealed

claim, or remand the reexamination proceeding to

the examiner for further consideration. The reversal

of the examiner’s determination not to make a

rejection proposed by the third party requester

constitutes a decision adverse to the patentability of

the claims which are subject to that proposed

rejection which will be set forth in the decision of

the Patent Trial and Appeal Board as a new ground

of rejection under paragraph (b) of this section. The

afﬁrmance of the rejection of a claim on any of the

grounds speciﬁed constitutes a general afﬁrmance

of the decision of the examiner on that claim, except

as to any ground speciﬁcally reversed.

(b) Should the Board reverse the examiner’s

determination not to make a rejection proposed by

a requester, the Board shall set forth in the opinion

in support of its decision a new ground of rejection;

or should the Board have knowledge of any grounds

not raised in the appeal for rejecting any pending

claim, it may include in its opinion a statement to

that effect with its reasons for so holding, which

statement shall constitute a new ground of rejection

of the claim. Any decision which includes a new

ground of rejection pursuant to this paragraph shall

not be considered ﬁnal for judicial review. When

the Board makes a new ground of rejection, the

owner, within one month from the date of the

decision, must exercise one of the following two

options with respect to the new ground of rejection

to avoid termination of the appeal proceeding as to

the rejected claim:

(1) Reopen prosecution. The owner may

ﬁle a response requesting reopening of prosecution

before the examiner. Such a response must be either

an amendment of the claims so rejected or new

evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may

request that the proceeding be reheard under § 41.79

by the Board upon the same record. The request for

rehearing must address any new ground of rejection

and state with particularity the points believed to

have been misapprehended or overlooked in entering

the new ground of rejection and also state all other

grounds upon which rehearing is sought.

requesting reopening of prosecution under paragraph

(b)(1) of this section, any requester, within one

month of the date of service of the owner’s response,

may once ﬁle comments on the response. Such

written comments must be limited to the issues

raised by the Board’s opinion reﬂecting its decision

and the owner’s response. Any requester that had

not previously ﬁled an appeal or cross appeal and

is seeking under this subsection to ﬁle comments

or a reply to the comments is subject to the appeal

and brief fees under § 41.20(b)(1) and (2),

respectively, which must accompany the comments

or reply.

(d) Following any response by the owner under

paragraph (b)(1) of this section and any written

comments from a requester under paragraph (c) of

this section, the proceeding will be remanded to the

R-400January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 41.77

examiner. The statement of the Board shall be

binding upon the examiner unless an amendment or

new evidence not previously of record is made

which, in the opinion of the examiner, overcomes

the new ground of rejection stated in the decision.

The examiner will consider any owner response

under paragraph (b)(1) of this section and any

written comments by a requester under paragraph

rejection is maintained or has been overcome.

(e) Within one month of the examiner’s

determination pursuant to paragraph (d) of this

section, the owner or any requester may once submit

comments in response to the examiner’s

determination. Within one month of the date of

service of comments in response to the examiner’s

determination, the owner and any requesters may

ﬁle a reply to the comments. No requester reply may

address the comments of any other requester reply.

Any requester that had not previously ﬁled an appeal

or cross appeal and is seeking under this subsection

to ﬁle comments or a reply to the comments is

subject to the appeal and brief fees under §

41.20(b)(1) and (2), respectively, which must

accompany the comments or reply.

(f) After submission of any comments and any

reply pursuant to paragraph (e) of this section, or

after time has expired, the proceeding will be

returned to the Board which shall reconsider the

matter and issue a new decision. The new decision

is deemed to incorporate the earlier decision, except

for those portions speciﬁcally withdrawn.

(g) The time period set forth in paragraph (b)

of this section is subject to the extension of time

provisions of § 1.956 of this title when the owner

is responding under paragraph (b)(1) of this section.

The time period set forth in paragraph (b) of this

section may not be extended when the owner is

responding under paragraph (b)(2) of this section.

The time periods set forth in paragraphs (c) and (e)

of this section may not be extended.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (a) revised, 77 FR 46615, Aug. 6,

2012, effective Sept. 16, 2012]

§ 41.79 Rehearing.

(a) Parties to the appeal may ﬁle a request for

rehearing of the decision within one month of the

date of:

(1) The original decision of the Board under

§ 41.77(a),

(2) The original § 41.77(b) decision under

the provisions of § 41.77(b)(2),

(3) The expiration of the time for the owner

to take action under § 41.77(b)(2), or

(4) The new decision of the Board under §

41.77(f).

(b)(1) The request for rehearing must state

with particularity the points believed to have been

misapprehended or overlooked in rendering the

Board’s opinion reﬂecting its decision. Arguments

not raised in the briefs before the Board and

evidence not previously relied upon in the briefs are

not permitted in the request for rehearing except as

permitted by paragraphs (b)(2) and (b)(3) of this

section.

(2) Upon a showing of good cause, appellant

and/or respondent may present a new argument

based upon a recent relevant decision of either the

Board or a Federal Court.

(3) New arguments responding to a new

ground of rejection made pursuant to § 41.77(b) are

permitted.

any request for rehearing under paragraph (a) of this

section, or any further request for rehearing under

paragraph (d) of this section, the owner and all

requesters may once ﬁle comments in opposition to

the request for rehearing or the further request for

rehearing. The comments in opposition must be

limited to the issues raised in the request for

rehearing or the further request for rehearing.

(d) If a party to an appeal ﬁles a request for

rehearing under paragraph (a) of this section, or a

further request for rehearing under this section, the

Board shall render a decision on the request for

rehearing. The decision on the request for rehearing

is deemed to incorporate the earlier opinion

reﬂecting its decision for appeal, except for those

portions speciﬁcally withdrawn on rehearing and is

ﬁnal for the purpose of judicial review, except when

noted otherwise in the decision on rehearing. If the

Board opinion reﬂecting its decision on rehearing

becomes, in effect, a new decision, and the Board

so indicates, then any party to the appeal may, within

one month of the new decision, ﬁle a further request

for rehearing of the new decision under this

January 2018R-401

§ 41.79CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

subsection. Such further request for rehearing must

comply with paragraph (b) of this section.

(e) The times for requesting rehearing under

paragraph (a) of this section, for requesting further

rehearing under paragraph (c) of this section, and

for submitting comments under paragraph (b) of

this section may not be extended.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.81 Action following decision.

The parties to an appeal to the Board may not appeal

to the U.S. Court of Appeals for the Federal Circuit

under § 1.983 of this title until all parties’ rights to

request rehearing have been exhausted, at which

time the decision of the Board is ﬁnal and appealable

by any party to the appeal to the Board.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

Subpart D — Contested Cases

§ 41.100 Deﬁnitions.

In addition to the deﬁnitions in § 41.2, the following

deﬁnitions apply to proceedings under this subpart:

Business day means a day other than a Saturday,

Sunday, or Federal holiday within the District of

Columbia.

Involved means the Board has declared the patent

application, patent, or claim so described to be a

subject of the contested case.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.101 Notice of proceeding.

(a) Notice of a contested case will be sent to

every party to the proceeding. The entry of the

notice initiates the proceeding.

(b) When the Board is unable to provide actual

notice of a contested case on a party through the

correspondence address of record for the party, the

Board may authorize other modes of notice,

including:

(1) Sending notice to another address

associated with the party, or

(2) Publishing the notice in the Ofﬁcial

Gazette of the United States Patent and Trademark

Ofﬁce.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.102 Completion of examination.

Before a contested case is initiated, except as the

Board may otherwise authorize, for each involved

application and patent:

(a) Examination or reexamination must be

completed, and

(b) There must be at least one claim that:

(1) Is patentable but for a judgment in the

contested case, and

(2) Would be involved in the contested case.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.103 Jurisdiction over involved ﬁles.

The Board acquires jurisdiction over any involved

ﬁle when the Board initiates a contested case. Other

proceedings for the involved ﬁle within the Ofﬁce

are suspended except as the Board may order.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.104 Conduct of contested cases.

(a) The Board may determine a proper course

of conduct in a proceeding for any situation not

speciﬁcally covered by this part and may enter

non-ﬁnal orders to administer the proceeding.

(b) An administrative patent judge may waive

or suspend in a proceeding the application of any

rule in this subpart, subject to such conditions as the

administrative patent judge may impose.

event of a conﬂict between a time set by rule and a

time set by order, the time set by order is controlling.

Action due on a day other than a business day may

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.81

be completed on the next business day unless the

Board expressly states otherwise.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.106 Filing and service.

(a) General format requirements.

(1) The paper used for ﬁlings must be

durable and white. A party must choose to ﬁle on

either A4-sized paper or 8½ inch x 11 inch paper

except in the case of exhibits that require a larger

size in order to preserve details of the original. A

party may not switch between paper sizes in a single

proceeding. Only one side of the paper may be used.

(2) In papers, including afﬁdavits, created

for the proceeding:

(i) Markings must be in black ink or must

otherwise provide an equivalently permanent, dark,

high-contrast image on the paper. The quality of

printing must be equivalent to the quality produced

by a laser printer. Either a proportional or

monospaced font may be used, but the proportional

font must be 12-point or larger and a monospaced

font must not contain more than 4 characters per

centimeter (10 characters per inch). Case names

must be underlined or italicized.

(ii) Double spacing must be used except

in headings, tables of contents, tables of authorities,

indices, signature blocks, and certiﬁcates of service.

Block quotations may be single-spaced and must be

indented. Margins must be at least 2.5 centimeters

(1 inch) on all sides.

(b) Papers other than exhibits—

(1) Cover sheet.

(i) The cover sheet must include the

caption the Board speciﬁes for the proceeding, a

header indicating the party and contact information

for the party, and a title indicating the sequence and

subject of the paper. For example, “JONES

MOTION 2, For beneﬁt of an earlier application”.

(ii) If the Board speciﬁes a color other

than white for the cover sheet, the cover sheet must

be that color.

(2) Papers must have two 0.5 cm (¼ inch)

holes with centers 1 cm (½ inch) from the top of the

page and 7 cm (2¾ inch) apart, centered horizontally

on the page.

(3) Incorporation by reference; combined

papers. Arguments must not be incorporated by

reference from one paper into another paper.

Combined motions, oppositions, replies, or other

combined papers are not permitted.

(4) Exhibits. Additional requirements for

exhibits appear in § 41.154(c).

accompanied by a working copy marked “APJ

Copy”.

(d) Speciﬁc ﬁling forms—

(1) Filing by mail. A paper ﬁled using the

Priority Mail Express® service of the United States

Postal Service will be deemed to be ﬁled as of “date

accepted” on the Priority Mail Express® mailing

label; otherwise, mail will be deemed to be ﬁled as

of the stamped date of receipt at the Board.

(2) Other modes of ﬁling. The Board may

authorize other modes of ﬁling, including electronic

ﬁling and hand ﬁling, and may set conditions for

the use of such other modes.

(e) Service.

(1) Papers ﬁled with the Board, if not

previously served, must be served simultaneously

on every opposing party except as the Board

expressly directs.

(2) If a party is represented by counsel,

service must be on counsel.

(3) Service must be by Priority Mail

Express® or by means at least as fast and reliable

as Priority Mail Express®. Electronic service is not

permitted without Board authorization.

(4) The date of service does not count in

computing the time for responding.

(f) Certiﬁcate of service.

(1) Papers other than exhibits must include

a certiﬁcate of service as a separate page at the end

of each paper that must be served on an opposing

party.

(2) Exhibits must be accompanied by a

certiﬁcate of service, but a single certiﬁcate may

accompany any group of exhibits submitted together.

January 2018R-403

§ 41.106CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(3) A certiﬁcate of service must state:

(i) The date and manner of service,

(ii) The name and address of every

person served, and

(iii) For exhibits ﬁled as a group, the

name and number of each exhibit served.

(4) A certiﬁcate made by a person other than

a registered patent practitioner must be in the form

of an afﬁdavit.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; paras. (d)(1) and (e)(3) revised, 79 FR

63036, Oct. 22, 2014, effective Oct. 22, 2014;]

§ 41.108 Lead counsel.

(a) A party may be represented by counsel. The

Board may require a party to appoint a lead counsel.

If counsel is not of record in a party’s involved

application or patent, then a power of attorney for

that counsel for the party’s involved application or

patent must be ﬁled with the notice required in

paragraph (b) of this section.

(b) Within 14 days of the initiation of each

contested case, each party must ﬁle a separate notice

identifying its counsel, if any, and providing contact

information for each counsel identiﬁed or, if the

party has no counsel, then for the party. Contact

information must, at a minimum, include:

(1) A mailing address;

(2) An address for courier delivery when the

mailing address is not available for such delivery

(for example, when the mailing address is a Post

Ofﬁce box);

(3) A telephone number;

(4) A facsimile number; and

(5) An electronic mail address.

any change in the contact information required in

paragraph (b) of this section.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.109 Access to and copies of Ofﬁce

records.

(a) Request for access or copies. Any request

from a party for access to or copies of Ofﬁce records

directly related to a contested case must be ﬁled

with the Board. The request must precisely identify

the records and in the case of copies include the

appropriate fee set under § 1.19(b) of this title.

(b) Authorization of access and copies. Access

and copies will ordinarily only be authorized for the

following records:

(1) The application ﬁle for an involved

patent;

(2) An involved application; and

(3) An application for which a party has been

accorded beneﬁt under subpart E of this part.

does not receive a complete copy of a record within

21 days of the authorization, the party must promptly

notify the Board.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.110 Filing claim information.

(a) Clean copy of claims. Within 14 days of the

initiation of the proceeding, each party must ﬁle a

clean copy of its involved claims and, if a

biotechnology material sequence is a limitation, a

clean copy of the sequence.

(b) Annotated copy of claims. Within 28 days

of the initiation of the proceeding, each party must:

(1) For each involved claim having a

limitation that is illustrated in a drawing or

biotechnology material sequence, ﬁle an annotated

copy of the claim indicating in bold face between

braces ({}) where each limitation is shown in the

drawing or sequence.

(2) For each involved claim that contains a

means-plus-function or step-plus-function limitation

in the form permitted under 35 U.S.C. 112(f), ﬁle

an annotated copy of the claim indicating in bold

face between braces ({ }) the speciﬁc portions of

the speciﬁcation that describe the structure, material,

or acts corresponding to each claimed function.

include:

(1) A clean copy of the claim,

(2) A claim chart showing where the

disclosure of the patent or application provides

R-404January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 41.108

written description of the subject matter of the claim,

and

(3) Where applicable, a copy of the claims

annotated according to paragraph (b) of this section.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (b)(2) revised, 77 FR 46615, Aug.

6, 2012, effective Sept. 16, 2012]

§ 41.120 Notice of basis for relief.

(a) The Board may require a party to provide a

notice stating the relief it requests and the basis for

its entitlement to relief. The Board may provide for

the notice to be maintained in conﬁdence for a

limited time.

(b) Effect. If a notice under paragraph (a) of

this section is required, a party will be limited to

ﬁling substantive motions consistent with the notice.

Ambiguities in the notice will be construed against

the party. A notice is not evidence except as an

admission by a party-opponent.

its notice. The motion should be ﬁled promptly after

the party becomes aware of the basis for the

correction. A correction ﬁled after the time set for

ﬁling notices will only be entered if entry would

serve the interests of justice.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.121 Motions.

(a) Types of motions—

(1) Substantive motions. Consistent with the

notice of requested relief, if any, and to the extent

the Board authorizes, a party may ﬁle a motion:

(i) To redeﬁne the scope of the contested

case,

(ii) To change beneﬁt accorded for the

contested subject matter, or

(iii) For judgment in the contested case.

(2) Responsive motions. The Board may

authorize a party to ﬁle a motion to amend or add

a claim, to change inventorship, or otherwise to cure

a defect raised in a notice of requested relief or in

a substantive motion.

(3) Miscellaneous motions. Any request for

relief other than a substantive or responsive motion

must be ﬁled as a miscellaneous motion.

(b) Burden of proof. The party ﬁling the motion

has the burden of proof to establish that it is entitled

to the requested relief.

(1) Each motion must be ﬁled as a separate

paper and must include:

(i) A statement of the precise relief

requested,

(ii) A statement of material facts (see

paragraph (d) of this section), and

(iii) A full statement of the reasons for

the relief requested, including a detailed explanation

of the signiﬁcance of the evidence and the governing

law, rules, and precedent.

(2) Compliance with rules. Where a rule in

part 1 of this title ordinarily governs the relief

sought, the motion must make any showings

required under that rule in addition to any showings

required in this part.

(3) The Board may order additional

showings or explanations as a condition for ﬁling a

motion.

(d) Statement of material facts. (1) Each

material fact shall be set forth as a separate

numbered sentence with speciﬁc citations to the

portions of the record that support the fact.

(2) The Board may require that the statement

of material facts be submitted as a separate paper.

(e) Claim charts. Claim charts must be used in

support of any paper requiring the comparison of a

claim to something else, such as another claim, prior

art, or a speciﬁcation. Claim charts must accompany

the paper as an appendix. Claim charts are not a

substitute for appropriate argument and explanation

in the paper.

(f) The Board may order brieﬁng on any issue

that could be raised by motion.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

January 2018R-405

§ 41.121CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 41.122 Oppositions and replies.

(a) Oppositions and replies must comply with

the content requirements for motions and must

include a statement identifying material facts in

dispute. Any material fact not speciﬁcally denied

shall be considered admitted.

(b) All arguments for the relief requested in a

motion must be made in the motion. A reply may

only respond to arguments raised in the

corresponding opposition.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.123 Default ﬁling times.

(a) A motion, other than a miscellaneous

motion, may only be ﬁled according to a schedule

the Board sets. The default times for acting are:

(1) An opposition is due 30 days after

service of the motion.

(2) A reply is due 30 days after service of

the opposition.

(3) A responsive motion is due 30 days after

the service of the motion.

(b) Miscellaneous motions.

(1) If no time for ﬁling a speciﬁc

miscellaneous motion is provided in this part or in

a Board order:

(i) The opposing party must be consulted

prior to ﬁling the miscellaneous motion, and

(ii) If an opposing party plans to oppose

the miscellaneous motion, the movant may not ﬁle

the motion without Board authorization. Such

authorization should ordinarily be obtained through

a telephone conference including the Board and

every other party to the proceeding. Delay in seeking

relief may justify a denial of the motion.

(2) An opposition may not be ﬁled without

authorization. The default times for acting are:

(i) An opposition to a miscellaneous

motion is due ﬁve business days after service of the

motion.

(ii) A reply to a miscellaneous motion

opposition is due three business days after service

of the opposition.

served with the ﬁrst paper in which it is cited except

as the Board may otherwise order.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.124 Oral argument.

(a) Request for oral argument. A party may

request an oral argument on an issue raised in a

paper within ﬁve business days of the ﬁling of the

paper. The request must be ﬁled as a separate paper

and must specify the issues to be considered.

(b) Copies for panel. If an oral argument is set

for a panel, the movant on any issue to be argued

must provide three working copies of the motion,

the opposition, and the reply. Each party is

responsible for providing three working copies of

its exhibits relating to the motion.

argument is granted, each party will have a total of

20 minutes to present its arguments, including any

time for rebuttal.

(d) Demonstrative exhibits must be served at

least ﬁve business days before the oral argument

and ﬁled no later than the time of the oral argument.

(e) Transcription. The Board encourages the

use of a transcription service at oral arguments but,

if such a service is to be used, the Board must be

notiﬁed in advance to ensure adequate facilities are

available and a transcript must be ﬁled with the

Board promptly after the oral argument.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.125 Decision on motions.

(a) Order of consideration. The Board may take

up motions for decisions in any order, may grant,

deny, or dismiss any motion, and may take such

other action appropriate to secure the just, speedy,

and inexpensive determination of the proceeding.

A decision on a motion may include deferral of

action on an issue until a later point in the

proceeding.

(b) Interlocutory decisions. A decision on

motions without a judgment is not ﬁnal for the

purposes of judicial review. A panel decision on an

R-406January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 41.122

issue will govern further proceedings in the

contested case.

for rehearing of a decision on a motion must be ﬁled

within fourteen days of the decision.

(2) No tolling. The ﬁling of a request for

rehearing does not toll times for taking action.

(3) Burden on rehearing. The burden of

showing a decision should be modiﬁed lies with the

party attacking the decision. The request must

speciﬁcally identify:

(i) All matters the party believes to have

been misapprehended or overlooked, and

(ii) The place where the matter was

previously addressed in a motion, opposition, or

reply.

(4) Opposition; reply. Neither an opposition

nor a reply to a request for rehearing may be ﬁled

without Board authorization.

(5) Panel rehearing. If a decision is not a

panel decision, the party requesting rehearing may

request that a panel rehear the decision. A panel

rehearing a procedural decision will review the

decision for an abuse of discretion.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.126 Arbitration.

(a) Parties to a contested case may resort to

binding arbitration to determine any issue in a

contested case. The Ofﬁce is not a party to the

arbitration. The Board is not bound and may

independently determine questions of patentability,

jurisdiction, and Ofﬁce practice.

(b) The Board will not authorize arbitration

unless:

(1) It is to be conducted according to Title

9 of the United States Code.

(2) The parties notify the Board in writing

of their intention to arbitrate.

(3) The agreement to arbitrate:

(i) Is in writing,

(ii) Speciﬁes the issues to be arbitrated,

(iii) Names the arbitrator, or provides a

date not more than 30 days after the execution of

the agreement for the selection of the arbitrator, and

(iv) Provides that the arbitrator’s award

shall be binding on the parties and that judgment

thereon can be entered by the Board.

(4) A copy of the agreement is ﬁled within

20 days after its execution.

(5) The arbitration is completed within the

time the Board sets.

selection of the arbitrator and the conduct of

proceedings before the arbitrator.

(d) Issues not disposed of by the arbitration will

be resolved in accordance with the procedures

established in this subpart.

(e) The Board will not consider the arbitration

award unless it:

(1) Is binding on the parties,

(2) Is in writing,

(3) States in a clear and deﬁnite manner each

issue arbitrated and the disposition of each issue,

and

(4) Is ﬁled within 20 days of the date of the

award.

(f) Once the award is ﬁled, the parties to the

award may not take actions inconsistent with the

award. If the award is dispositive of the contested

subject matter for a party, the Board may enter

judgment as to that party.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.127 Judgment.

(a) Effect within Ofﬁce—(1) Estoppel. A

judgment disposes of all issues that were, or by

motion could have properly been, raised and

decided. A losing party who could have properly

moved for relief on an issue, but did not so move,

may not take action in the Ofﬁce after the judgment

that is inconsistent with that party’s failure to move,

except that a losing party shall not be estopped with

respect to any contested subject matter for which

that party was awarded a favorable judgment.

January 2018R-407

§ 41.127CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(2) Final disposal of claim. Adverse

judgment against a claim is a ﬁnal action of the

Ofﬁce requiring no further action by the Ofﬁce to

dispose of the claim permanently.

(b) Request for adverse judgment. A party may

at any time in the proceeding request judgment

against itself. Actions construed to be a request for

adverse judgment include:

(1) Abandonment of an involved application

such that the party no longer has an application or

patent involved in the proceeding,

(2) Cancellation or disclaiming of a claim

such that the party no longer has a claim involved

in the proceeding,

(3) Concession of priority or unpatentability

of the contested subject matter, and

(4) Abandonment of the contest.

include a recommendation for further action by the

examiner or by the Director. If the Board

recommends rejection of a claim of an involved

application, the examiner must enter and maintain

the recommended rejection unless an amendment

or showing of facts not previously of record is ﬁled

which, in the opinion of the examiner, overcomes

the recommended rejection.

(d) Rehearing. A party dissatisﬁed with the

judgment may ﬁle a request for rehearing within 30

days of the entry of the judgment. The request must

speciﬁcally identify all matters the party believes

to have been misapprehended or overlooked, and

the place where the matter was previously addressed

in a motion, opposition or reply.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (d) revised, 69 FR 58260, Sept. 30,

2004, effective Sept. 30, 2004]

§ 41.128 Sanctions.

(a) The Board may impose a sanction against a

party for misconduct, including:

(1) Failure to comply with an applicable rule

or order in the proceeding;

(2) Advancing a misleading or frivolous

request for relief or argument; or

(3) Engaging in dilatory tactics.

(b) Sanctions include entry of:

(1) An order holding certain facts to have

been established in the proceeding;

(2) An order expunging, or precluding a

party from ﬁling, a paper;

(3) An order precluding a party from

presenting or contesting a particular issue;

(4) An order precluding a party from

requesting, obtaining, or opposing discovery;

(5) An order excluding evidence;

(6) An order awarding compensatory

expenses, including attorney fees;

(7) An order requiring terminal disclaimer

of patent term; or

(8) Judgment in the contested case.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.150 Discovery.

(a) Limited discovery. A party is not entitled to

discovery except as authorized in this subpart. The

parties may agree to discovery among themselves

at any time.

(b) Automatic discovery.

(1) Within 21 days of a request by an

opposing party, a party must:

(i) Serve a legible copy of every

requested patent, patent application, literature

reference, and test standard mentioned in the

speciﬁcation of the party’s involved patent or

application, or application upon which the party will

rely for beneﬁt, and, if the requested material is in

a language other than English, a translation, if

available, and

(ii) File with the Board a notice (without

copies of the requested materials) of service of the

requested materials.

(2) Unless previously served, or the Board

orders otherwise, any exhibit cited in a motion or

in testimony must be served with the citing motion

or testimony.

request additional discovery. The requesting party

must show that such additional discovery is in the

interests of justice. The Board may specify

conditions for such additional discovery.

R-408January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 41.128

(2) When appropriate, a party may obtain

production of documents and things during cross

examination of an opponent’s witness or during

testimony authorized under § 41.156.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.151 Admissibility.

Evidence that is not taken, sought, or ﬁled in

accordance with this subpart shall not be admissible.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.152 Applicability of the Federal Rules

of Evidence.

(a) Generally. Except as otherwise provided in

this subpart, the Federal Rules of Evidence shall

apply to contested cases.

(b) Exclusions. Those portions of the Federal

Rules of Evidence relating to criminal proceedings,

juries, and other matters not relevant to proceedings

under this subpart shall not apply.

otherwise clear from context, the following terms

of the Federal Rules of Evidence shall be construed

as indicated:

Appellate court means United States Court

of Appeals for the Federal Circuit or a United States

district court when judicial review is under 35

U.S.C. 146.

Civil action, civil proceeding, action, and

trial mean contested case.

Courts of the United States, U.S.

Magistrate, court, trial court, and trier of fact mean

Board.

Hearing means:

(i) In Federal Rule of Evidence 703, the

time when the expert testiﬁes.

(ii) In Federal Rule of Evidence

804(a)(5), the time for taking testimony.

Judge means the Board.

Judicial notice means ofﬁcial notice.

Trial or hearing means, in Federal Rule of

Evidence 807, the time for taking testimony.

(d) The Board, in determining foreign law, may

consider any relevant material or source, including

testimony, whether or not submitted by a party or

admissible under the Federal Rules of Evidence.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.153 Records of the Ofﬁce.

Certiﬁcation is not necessary as a condition to

admissibility when the evidence to be submitted is

a record of the Ofﬁce to which all parties have

access.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.154 Form of evidence.

(a) Evidence consists of afﬁdavits, transcripts

of depositions, documents, and things. All evidence

must be submitted in the form of an exhibit.

(b) Translation required. When a party relies

on a document or is required to produce a document

in a language other than English, a translation of the

document into English and an afﬁdavit attesting to

the accuracy of the translation must be ﬁled with

the document.

(c)(1) Each exhibit must have an exhibit

label with a unique number in a range assigned by

the Board, the names of the parties, and the

proceeding number in the following format:

JONES EXHIBIT 2001

Jones v. Smith

Contested Case 104,999

(2) When the exhibit is a paper:

(i) Each page must be uniquely numbered

in sequence, and

(ii) The exhibit label must be afﬁxed to

the lower right corner of the ﬁrst page of the exhibit

without obscuring information on the ﬁrst page or,

if obscuring is unavoidable, afﬁxed to a duplicate

ﬁrst page.

(d) Exhibit list. Each party must maintain an

exhibit list with the exhibit number and a brief

description of each exhibit. If the exhibit is not ﬁled,

January 2018R-409

§ 41.154CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

the exhibit list should note that fact. The Board may

require the ﬁling of a current exhibit list prior to

acting on a motion.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (c)(1) revised, 69 FR 58260, Sept.

30, 2004, effective Sept. 30, 2004]

§ 41.155 Objection; motion to exclude;

motion in limine.

(a) Deposition. Objections to deposition

evidence must be made during the deposition.

Evidence to cure the objection must be provided

during the deposition unless the parties to the

deposition stipulate otherwise on the deposition

record.

(b) Other than deposition.For evidence other

than deposition evidence:

(1) Objection. Any objection must be served

within ﬁve business days of service of evidence,

other than deposition evidence, to which the

objection is directed.

(2) Supplemental evidence. The party

relying on evidence for which an objection is timely

served may respond to the objection by serving

supplemental evidence within ten business days of

service of the objection.

to exclude evidence must be ﬁled to preserve any

objection. The motion must identify the objections

in the record in order and must explain the

objections.

(d) Motion in limine. A party may ﬁle a

miscellaneous motion in limine for a ruling on the

admissibility of evidence.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (b) revised, 69 FR 58260, Sept. 30,

2004, effective Sept. 30, 2004]

§ 41.156 Compelling testimony and

production.

(a) Authorization required. A party seeking to

compel testimony or production of documents or

things must ﬁle a miscellaneous motion for

authorization. The miscellaneous motion must

describe the general relevance of the testimony,

document, or thing and must:

(1) In the case of testimony, identify the

witness by name or title, and

(2) In the case of a document or thing, the

general nature of the document or thing.

(b) Outside the United States. For testimony or

production sought outside the United States, the

motion must also:

(1) In the case of testimony. (i) Identify the

foreign country and explain why the party believes

the witness can be compelled to testify in the foreign

country, including a description of the procedures

that will be used to compel the testimony in the

foreign country and an estimate of the time it is

expected to take to obtain the testimony; and

(ii) Demonstrate that the party has made

reasonable efforts to secure the agreement of the

witness to testify in the United States but has been

unsuccessful in obtaining the agreement, even

though the party has offered to pay the expenses of

the witness to travel to and testify in the United

States.

(2) In the case of production of a document

or thing. (i) Identify the foreign country and explain

why the party believes production of the document

or thing can be compelled in the foreign country,

including a description of the procedures that will

be used to compel production of the document or

thing in the foreign country and an estimate of the

time it is expected to take to obtain production of

the document or thing; and

(ii) Demonstrate that the party has made

reasonable efforts to obtain the agreement of the

individual or entity having possession, custody, or

control of the document to produce the document

or thing in the United States but has been

unsuccessful in obtaining that agreement, even

though the party has offered to pay the expenses of

producing the document or thing in the United

States.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.157 Taking testimony.

(a) Form. Direct testimony must be submitted

in the form of an afﬁdavit except when the testimony

is compelled under 35 U.S.C. 24, in which case it

may be in the form of a deposition transcript.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.155

(b) Time and location. (1) Uncompelled direct

testimony may be taken at any time; otherwise,

testimony may only be taken during such time

period as the Board may authorize.

(2) Other testimony. (i) Except as the Board

otherwise orders, authorized testimony may be taken

at any reasonable time and location within the

United States before any disinterested ofﬁcial

authorized to administer oaths at that location.

(ii) Testimony outside the United States

may only be taken as the Board speciﬁcally directs.

of testimony, all parties to the proceeding must agree

on the time and place for taking testimony. If the

parties cannot agree, the party seeking the testimony

must initiate a conference with the Board to set a

time and place.

(2) Cross-examination should ordinarily take

place after any supplemental evidence relating to

the direct testimony has been ﬁled and more than a

week before the ﬁling date for any paper in which

the cross-examination testimony is expected to be

used. A party requesting cross-examination

testimony of more than one witness may choose the

order in which the witnesses are to be

cross-examined.

(3) In the case of direct testimony, at least

three business days prior to the conference in

paragraph (c)(1) of this section, the party seeking

the direct testimony must serve:

(i) A list and copy of each document

under the party’s control and on which the party

intends to rely, and

(ii) A list of, and proffer of reasonable

access to, any thing other than a document under

the party’s control and on which the party intends

to rely.

(4) Notice of the deposition must be ﬁled at

least two business days before a deposition. The

notice limits the scope of the testimony and must

list:

(i) The time and place of the deposition,

(ii) The name and address of the witness,

(iii) A list of the exhibits to be relied

upon during the deposition, and

(iv) A general description of the scope

and nature of the testimony to be elicited.

(5) Motion to quash. Objection to a defect

in the notice is waived unless a miscellaneous

motion to quash is promptly ﬁled.

(d) Deposition in a foreign language. If an

interpreter will be used during the deposition, the

party calling the witness must initiate a conference

with the Board at least ﬁve business days before the

deposition.

(e) Manner of taking testimony. (1) Each

witness before giving a deposition shall be duly

sworn according to law by the ofﬁcer before whom

the deposition is to be taken. The ofﬁcer must be

authorized to take testimony under 35 U.S.C. 23.

(2) The testimony shall be taken in answer

to interrogatories with any questions and answers

recorded in their regular order by the ofﬁcer, or by

some other disinterested person in the presence of

the ofﬁcer, unless the presence of the ofﬁcer is

waived on the record by agreement of all parties.

(3) Any exhibits relied upon must be

numbered according to the numbering scheme

assigned for the contested case and must, if not

previously served, be served at the deposition.

(4) All objections made at the time of the

deposition to the qualiﬁcations of the ofﬁcer taking

the deposition, the manner of taking it, the evidence

presented, the conduct of any party, and any other

objection to the proceeding shall be noted on the

record by the ofﬁcer. Evidence objected to shall be

taken subject to a ruling on the objection.

(5) When the testimony has been transcribed,

the witness shall read and sign (in the form of an

afﬁdavit) a transcript of the deposition unless:

(i) The parties otherwise agree in writing,

(ii) The parties waive reading and

signature by the witness on the record at the

deposition, or

(iii) The witness refuses to read or sign

the transcript of the deposition.

(6) The ofﬁcer shall prepare a certiﬁed

transcript by attaching to the transcript of the

deposition a certiﬁcate in the form of an afﬁdavit

signed and sealed by the ofﬁcer. Unless the parties

waive any of the following requirements, in which

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§ 41.157CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

case the certiﬁcate shall so state, the certiﬁcate must

state:

(i) The witness was duly sworn by the

ofﬁcer before commencement of testimony by the

witness;

(ii) The transcript is a true record of the

testimony given by the witness;

(iii) The name of the person who

recorded the testimony and, if the ofﬁcer did not

record it, whether the testimony was recorded in the

presence of the ofﬁcer;

(iv) The presence or absence of any

opponent;

(v) The place where the deposition was

taken and the day and hour when the deposition

began and ended;

(vi) The ofﬁcer has no disqualifying

interest, personal or ﬁnancial, in a party; and

(vii) If a witness refuses to read or sign

the transcript, the circumstances under which the

witness refused.

(7) The ofﬁcer must promptly provide a copy

of the transcript to all parties. The proponent of the

testimony must ﬁle the original as an exhibit.

(8) Any objection to the content, form, or

manner of taking the deposition, including the

qualiﬁcations of the ofﬁcer, is waived unless made

on the record during the deposition and preserved

in a timely ﬁled miscellaneous motion to exclude.

(f) Costs. Except as the Board may order or the

parties may agree in writing, the proponent of the

testimony shall bear all costs associated with the

testimony, including the reasonable costs associated

with making the witness available for the

cross-examination.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.158 Expert testimony; tests and data.

(a) Expert testimony that does not disclose the

underlying facts or data on which the opinion is

based is entitled to little or no weight. Testimony

on United States patent law will not be admitted.

(b) If a party relies on a technical test or data

from such a test, the party must provide an afﬁdavit

explaining:

(1) Why the test or data is being used,

(2) How the test was performed and the data

was generated,

(3) How the data is used to determine a

value,

(4) How the test is regarded in the relevant

art, and

(5) Any other information necessary for the

Board to evaluate the test and data.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

Subpart E — Patent Interferences

§ 41.200 Procedure; pendency.

(a) A patent interference is a contested case

subject to the procedures set forth in subpart D of

this part.

(b) Any reference to 35 U.S.C. 102 or 135 in

this subpart refers to the statute in effect on March

15, 2013, unless otherwise expressly indicated. Any

reference to 35 U.S.C. 141 or 146 in this subpart

refers to the statute applicable to the involved

application or patent.

such that pendency before the Board is normally no

more than two years.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (b) removed and reserved, 75 FR

19958, Apr. 15, 2010, effective Apr. 15, 2010; para. (b)

added, 80 FR 17918, Apr. 2, 2015, effective May 13,

2015]

§ 41.201 Deﬁnitions.

In addition to the deﬁnitions in §§ 41.2 and 41.100,

the following deﬁnitions apply to proceedings under

this subpart:

Accord beneﬁt means Board recognition that

a patent application provides a proper constructive

reduction to practice under 35 U.S.C. 102(g)(1).

Constructive reduction to practice means a

described and enabled anticipation under 35 U.S.C.

102(g)(1), in a patent application of the subject

matter of a count. Earliest constructive reduction to

practice means the ﬁrst constructive reduction to

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.158

practice that has been continuously disclosed

through a chain of patent applications including in

the involved application or patent. For the chain to

be continuous, each subsequent application must

comply with the requirements of 35 U.S.C. 119–121,

365, or 386.

Count means the Board’s description of the

interfering subject matter that sets the scope of

admissible proofs on priority. Where there is more

than one count, each count must describe a

patentably distinct invention.

Involved claim means, for the purposes of 35

U.S.C. 135(a), a claim that has been designated as

corresponding to the count.

Senior party means the party entitled to the

presumption under § 41.207(a)(1) that it is the prior

inventor. Any other party is a junior party.

Threshold issue means an issue that, if resolved

in favor of the movant, would deprive the opponent

of standing in the interference. Threshold issues

may include:

(1) No interference-in-fact, and

(2) In the case of an involved application

claim ﬁrst made after the publication of the

movant’s application or issuance of the movant’s

patent:

(i) Repose under 35 U.S.C. 135(b) in

view of the movant’s patent or published

application, or

(ii) Unpatentability for lack of written

description under 35 U.S.C. 112 of an involved

application claim where the applicant suggested, or

could have suggested, an interference under §

41.202(a).

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (2)(ii) of the deﬁnition of

“Threshold issue” revised, 77 FR 46615, Aug. 6, 2012,

effective Sept. 16, 2012; deﬁnition of "Constructive

reduction to practice" and para. (2)(ii) of the deﬁnition

of "Threshold issue" revised, 80 FR 17918, Apr. 2, 2015,

effective May 13, 2015]

§ 41.202 Suggesting an interference.

(a) Applicant. An applicant, including a reissue

applicant, may suggest an interference with another

application or a patent. The suggestion must:

(1) Provide sufﬁcient information to identify

the application or patent with which the applicant

seeks an interference,

(2) Identify all claims the applicant believes

interfere, propose one or more counts, and show

how the claims correspond to one or more counts,

(3) For each count, provide a claim chart

comparing at least one claim of each party

corresponding to the count and show why the claims

interfere within the meaning of § 41.203(a),

(4) Explain in detail why the applicant will

prevail on priority,

(5) If a claim has been added or amended to

provoke an interference, provide a claim chart

showing the written description for each claim in

the applicant’s speciﬁcation, and

(6) For each constructive reduction to

practice for which the applicant wishes to be

accorded beneﬁt, provide a chart showing where

the disclosure provides a constructive reduction to

practice within the scope of the interfering subject

matter.

(b) Patentee. A patentee cannot suggest an

interference under this section but may, to the extent

permitted under § 1.291 of this title, alert the

examiner of an application claiming interfering

subject matter to the possibility of an interference.

applicant to add a claim to provoke an interference.

Failure to satisfy the requirement within a period

(not less than one month) the examiner sets will

operate as a concession of priority for the subject

matter of the claim. If the interference would be

with a patent, the applicant must also comply with

paragraphs (a)(2) through (a)(6) of this section. The

claim the examiner proposes to have added must,

apart from the question of priority under 35 U.S.C.

102(g):

(1) Be patentable to the applicant, and

(2) Be drawn to patentable subject matter

claimed by another applicant or patentee.

(d) Requirement to show priority under 35

U.S.C. 102(g).(1) When an applicant has an earliest

constructive reduction to practice that is later than

the apparent earliest constructive reduction to

practice for a patent or published application

January 2018R-413

§ 41.202CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

claiming interfering subject matter, the applicant

must show why it would prevail on priority.

(2) If an applicant fails to show priority

under paragraph (d)(1) of this section, an

administrative patent judge may nevertheless declare

an interference to place the applicant under an order

to show cause why judgment should not be entered

against the applicant on priority. New evidence in

support of priority will not be admitted except on a

showing of good cause. The Board may authorize

the ﬁling of motions to redeﬁne the interfering

subject matter or to change the beneﬁt accorded to

the parties.

(e) Sufﬁciency of showing. (1) A showing of

priority under this section is not sufﬁcient unless it

would, if unrebutted, support a determination of

priority in favor of the party making the showing.

(2) When testimony or production necessary

to show priority is not available without

authorization under § 41.150(c) or § 41.156(a), the

showing shall include:

(i) Any necessary interrogatory, request

for admission, request for production, or deposition

request, and

(ii) A detailed proffer of what the

response to the interrogatory or request would be

expected to be and an explanation of the relevance

of the response to the question of priority.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004; para. (b) revised, 77 FR 42150, July 17,

2012, effective Sept. 16, 2012]

§ 41.203 Declaration.

(a) Interfering subject matter. An interference

exists if the subject matter of a claim of one party

would, if prior art, have anticipated or rendered

obvious the subject matter of a claim of the opposing

party and vice versa.

(b) Notice of declaration. An administrative

patent judge declares the patent interference on

behalf of the Director. A notice declaring an

interference identiﬁes:

(1) The interfering subject matter;

(2) The involved applications, patents, and

claims;

(3) The accorded beneﬁt for each count; and

(4) The claims corresponding to each count.

judge may redeclare a patent interference on behalf

of the Director to change the declaration made under

paragraph (b) of this section.

(d) A party may suggest the addition of a patent

or application to the interference or the declaration

of an additional interference. The suggestion should

make the showings required under § 41.202(a) of

this part.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.204 Notice of basis for relief.

(a) Priority statement. (1) A party may not

submit evidence of its priority in addition to its

accorded beneﬁt unless it ﬁles a statement setting

forth all bases on which the party intends to establish

its entitlement to judgment on priority.

(2) The priority statement must:

(i) State the date and location of the

party’s earliest corroborated conception,

(ii) State the date and location of the

party’s earliest corroborated actual reduction to

practice,

(iii) State the earliest corroborated date

on which the party’s diligence began, and

(iv) Provide a copy of the earliest

document upon which the party will rely to show

conception.

(3) If a junior party fails to ﬁle a priority

statement overcoming a senior party’s accorded

beneﬁt, judgment shall be entered against the junior

party absent a showing of good cause.

(b) Other substantive motions. The Board may

require a party to list the motions it intends to ﬁle,

including sufﬁcient detail to place the Board and

the opponent on notice of the precise relief sought.

times for ﬁling and serving statements required

under this section.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.203

§ 41.205 Settlement agreements.

(a) Constructive notice; time for ﬁling. Pursuant

to 35 U.S.C. 135(c), an agreement or understanding,

including collateral agreements referred to therein,

made in connection with or in contemplation of the

termination of an interference must be ﬁled prior to

the termination of the interference between the

parties to the agreement. After a ﬁnal decision is

entered by the Board, an interference is considered

terminated when no appeal (35 U.S.C. 141) or other

review (35 U.S.C. 146 ) has been or can be taken

or had. If an appeal to the U.S. Court of Appeals for

the Federal Circuit (under 35 U.S.C. 141) or a civil

action (under 35 U.S.C. 146 ) has been ﬁled the

interference is considered terminated when the

appeal or civil action is terminated. A civil action

is terminated when the time to appeal the judgment

expires. An appeal to the U.S. Court of Appeals for

the Federal Circuit, whether from a decision of the

Board or a judgment in a civil action, is terminated

when the mandate is issued by the Court.

(b) Untimely ﬁling. The Chief Administrative

Patent Judge may permit the ﬁling of an agreement

under paragraph (a) of this section up to six months

after termination upon petition and a showing of

good cause for the failure to ﬁle prior to termination.

agreement under paragraph (a) of this section may

request that the agreement be kept separate from the

interference ﬁle. The request must be ﬁled with or

promptly after the agreement is ﬁled.

(d) Access to agreement. Any person, other

than a representative of a Government agency, may

have access to an agreement kept separate under

paragraph (c) of this section only upon petition and

on a showing of good cause. The agreement will be

available to Government agencies on written request.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.206 Common interests in the invention.

An administrative patent judge may decline to

declare, or if already declared the Board may issue

judgment in, an interference between an application

and another application or patent that are commonly

owned.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.207 Presumptions.

(a) Priority—(1) Order of invention. Parties

are presumed to have invented interfering subject

matter in the order of the dates of their accorded

beneﬁt for each count. If two parties are accorded

the beneﬁt of the same earliest date of constructive

reduction to practice, then neither party is entitled

to a presumption of priority with respect to the other

such party.

(2) Evidentiary standard. Priority may be

proved by a preponderance of the evidence except

a party must prove priority by clear and convincing

evidence if the date of its earliest constructive

reduction to practice is after the issue date of an

involved patent or the publication date under 35

U.S.C. 122(b) of an involved application or patent.

(b) Claim correspondence. (1) For the purposes

of determining priority and derivation, all claims of

a party corresponding to the count are presumed to

stand or fall together. To challenge this presumption,

a party must ﬁle a timely substantive motion to have

a corresponding claim designated as not

corresponding to the count. No presumption based

on claim correspondence regarding the grouping of

claims exists for other grounds of unpatentability.

(2) A claim corresponds to a count if the

subject matter of the count, treated as prior art to

the claim, would have anticipated or rendered

obvious the subject matter of the claim.

motion for judgment of unpatentability against an

opponent’s claim on the basis of prior art is granted,

each of the movant’s claims corresponding to the

same count as the opponent’s claim will be

presumed to be unpatentable in view of the same

prior art unless the movant in its motion rebuts this

presumption.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

§ 41.208 Content of substantive and

responsive motions.

The general requirements for motions in contested

cases are stated at § 41.121(c).

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§ 41.208CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(a) In an interference, substantive motions must:

(1) Raise a threshold issue,

(2) Seek to change the scope of the deﬁnition

of the interfering subject matter or the

correspondence of claims to the count,

(3) Seek to change the beneﬁt accorded for

the count, or

(4) Seek judgment on derivation or on

priority.

(b) To be sufﬁcient, a motion must provide a

showing, supported with appropriate evidence, such

that, if unrebutted, it would justify the relief sought.

The burden of proof is on the movant.

to add or amend a claim must show the claim is

patentable.

(2) A party moving to add or amend a count

must show the count is patentable over prior art.

[Added, 69 FR 49959, Aug. 12, 2004, effective

Sept. 13, 2004]

PART 42 — TRIAL PRACTICE BEFORE THE

PATENT TRIAL AND APPEAL BOARD

Trial Practice and Procedure

GENERAL

Sec.

42.1 Policy.

42.2 Deﬁnitions.

42.3 Jurisdiction.

42.4 Notice of trial.

42.5 Conduct of the proceeding.

42.6 Filing of documents, including exhibits;

service.

42.7 Management of the record.

42.8 Mandatory notices.

42.9 Action by patent owner.

42.10 Counsel.

42.11 Duty of candor; signing papers;

representations to the Board; sanctions.

42.12 Sanctions.

42.13 Citation of authority.

42.14 Public availability.

FEES

42.15 Fees.

PETITION AND MOTION PRACTICE

42.20 Generally.

42.21 Notice of basis for relief.

42.22 Content of petitions and motions.

42.23 Oppositions and replies.

42.24 Type-volume or page-limits for petitions,

motions, oppositions, and replies.

42.25 Default ﬁling times.

TESTIMONY AND PRODUCTION

42.51 Discovery.

42.52 Compelling testimony and production.

42.53 Taking testimony.

42.54 Protective order.

42.55 Conﬁdential information in a petition.

42.56 Expungement of conﬁdential information.

42.57 Privilege for patent practitioners.

42.61 Admissibility.

42.62 Applicability of the Federal rules of

evidence.

42.63 Form of evidence.

42.64 Objection; motion to exclude.

42.65 Expert testimony; tests and data.

ORAL ARGUMENT, DECISION, AND SETTLEMENT

42.70 Oral argument.

42.71 Decision on petitions or motions.

42.72 Termination of trial.

42.73 Judgment.

42.74 Settlement.

CERTIFICATE

42.80 Certiﬁcate.

Inter Partes Review

GENERAL

Sec.

42.100 Procedure; pendency.

42.101 Who may petition for inter partes review.

42.102 Time for ﬁling.

42.103 Inter partes review fee.

42.104 Content of petition.

42.105 Service of petition.

42.106 Filing date.

42.107 Preliminary response to petition.

INSTITUTING INTER PARTES REVIEW

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.208

42.108 Institution of inter partes review.

AFTER INSTITUTION OF INTER PARTES REVIEW

42.120 Patent owner response.

42.121 Amendment of the patent.

42.122 Multiple proceedings and Joinder.

42.123 Filing of supplemental information.

Post-Grant Review

GENERAL

Sec.

42.200 Procedure; pendency.

42.201 Who may petition for a post-grant review.

42.202 Time for ﬁling.

42.203 Post-grant review fee.

42.204 Content of petition.

42.205 Service of petition.

42.206 Filing date.

42.207 Preliminary response to petition.

INSTITUTING POST-GRANT REVIEW

42.208 Institution of post-grant review.

AFTER INSTITUTION OF POST-GRANT REVIEW

42.220 Patent owner response.

42.221 Amendment of the patent.

42.222 Multiple proceedings and Joinder.

42.223 Filing of supplemental information.

42.224 Discovery.

Transitional Program for Covered Business Method

Patents

42.300 Procedure; pendency.

42.301 Deﬁnitions.

42.302 Who may petition for a covered business

method patent review.

42.303 Time for ﬁling.

42.304 Content of petition.

Derivation

GENERAL

Sec.

42.400 Procedure; pendency

42.401 Deﬁnitions.

42.402 Who may ﬁle a petition for a derivation

proceeding.

42.403 Time for ﬁling.

42.404 Derivation fee.

42.405 Content of petition.

42.406 Service of petition.

42.407 Filing date.

INSTITUTING DERIVATION PROCEEDING

42.408 Institution of derivation proceeding.

AFTER INSTITUTION OF DERIVATION

PROCEEDING

42.409 Settlement agreements.

42.410 Arbitration.

42.411 Common interests in the invention.

42.412 Public availability of Board records.

Subpart A — Trial Practice and Procedure

GENERAL

§ 42.1 Policy.

(a) Scope. Part 42 governs proceedings before

the Patent Trial and Appeal Board. Sections 1.4,

1.7, 1.14, 1.16, 1.22, 1.23, 1.25, 1.26, 1.32, 1.34,

and 1.36 of this chapter also apply to proceedings

before the Board, as do other sections of part 1 of

this chapter that are incorporated by reference into

this part.

(b) Construction. This part shall be construed

to secure the just, speedy, and inexpensive resolution

of every proceeding.

courtesy and decorum in all proceedings before the

Board, including in interactions with other parties.

(d) Evidentiary standard. The default

evidentiary standard is a preponderance of the

evidence.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.2 Deﬁnitions.

The following deﬁnitions apply to this part:

Afﬁdavit means afﬁdavit or declaration under

§ 1.68 of this chapter. A transcript of an ex parte

deposition or a declaration under 28 U.S.C. 1746

may be used as an afﬁdavit.

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§ 42.2CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Board means the Patent Trial and Appeal

Board. Board means a panel of the Board, or a

member or employee acting with the authority of

the Board, including:

(1) For petition decisions and interlocutory

decisions, a Board member or employee acting with

the authority of the Board.

(2) For ﬁnal written decisions under 35

U.S.C. 135(d), 318(a) , and 328(a), a panel of the

Board.

Business day means a day other than a

Saturday, Sunday, or Federal holiday within the

District of Columbia.

Conﬁdential information means trade secret

or other conﬁdential research, development, or

commercial information.

Final means ﬁnal for the purpose of judicial

review to the extent available. A decision is ﬁnal

only if it disposes of all necessary issues with regard

to the party seeking judicial review, and does not

indicate that further action is required.

Hearing means consideration of the trial.

Involved means an application, patent, or claim

that is the subject of the proceeding.

Judgment means a ﬁnal written decision by

the Board, or a termination of a proceeding.

Motion means a request for relief other than

by petition.

Ofﬁce means the United States Patent and

Trademark Ofﬁce.

Panel means at least three members of the

Board.

Party means at least the petitioner and the

patent owner and, in a derivation proceeding, any

applicant or assignee of the involved application.

Petition is a request that a trial be instituted.

Petitioner means the party ﬁling a petition

requesting that a trial be instituted.

Preliminary Proceeding begins with the ﬁling

of a petition for instituting a trial and ends with a

written decision as to whether a trial will be

instituted.

Proceeding means a trial or preliminary

proceeding.

Rehearing means reconsideration.

Trial means a contested case instituted by the

Board based upon a petition. A trial begins with a

written decision notifying the petitioner and patent

owner of the institution of the trial. The term trial

speciﬁcally includes a derivation proceeding under

35 U.S.C. 135; an inter partes review under Chapter

31 of title 35, United States Code; a post-grant

review under Chapter 32 of title 35, United States

Code; and a transitional business-method review

under section 18 of the Leahy-Smith America

Invents Act. Patent interferences are administered

under part 41 and not under part 42 of this title, and

therefore are not trials.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.3 Jurisdiction.

(a) The Board may exercise exclusive

jurisdiction within the Ofﬁce over every involved

application and patent during the proceeding, as the

Board may order.

(b) A petition to institute a trial must be ﬁled

with the Board consistent with any time period

required by statute.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.4 Notice of trial.

(a) Institution of trial. The Board institutes the

trial on behalf of the Director.

(b) Notice of a trial will be sent to every party

to the proceeding. The entry of the notice institutes

the trial.

of notice, including:

(1) Sending notice to another address

associated with the party, or

(2) Publishing the notice in the Ofﬁcial

Gazette of the United States Patent and Trademark

Ofﬁce or the Federal Register.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.5 Conduct of the proceeding.

(a) The Board may determine a proper course

of conduct in a proceeding for any situation not

R-418January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.3

speciﬁcally covered by this part and may enter

non-ﬁnal orders to administer the proceeding.

(b) The Board may waive or suspend a

requirement of parts 1, 41, and 42 and may place

conditions on the waiver or suspension.

(1) Setting times. The Board may set times

by order. Times set by rule are default and may be

modiﬁed by order. Any modiﬁcation of times will

take any applicable statutory pendency goal into

account.

(2) Extension of time. A request for an

extension of time must be supported by a showing

of good cause.

(3) Late action. A late action will be

excused on a showing of good cause or upon a

Board decision that consideration on the merits

would be in the interests of justice.

(d) Ex parte communications. Communication

regarding a speciﬁc proceeding with a Board

member deﬁned in 35 U.S.C. 6(a) is not permitted

unless both parties have an opportunity to be

involved in the communication.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.6 Filing of documents, including

exhibits; service.

(a) General format requirements.

(1) Page size must be 81⁄2 inch × 11 inch

except in the case of exhibits that require a larger

size in order to preserve details of the original.

(2) In documents, including afﬁdavits,

created for the proceeding:

(i) Markings must be in black or must

otherwise provide an equivalent dark, high-contrast

image;

(ii) 14-point, Times New Roman

proportional font, with normal spacing, must be

used;

(iii) Double spacing must be used except

in claim charts, headings, tables indices, signature

blocks, and certiﬁcates of service. Block quotations

may be 1.5 spaced, but must be indented from both

the left and the right margins; and

(iv) Margins must be at least 2.5

centimeters (1 inch) on all sides.

(3) Incorporation by reference; combined

documents. Arguments must not be incorporated by

reference from one document into another document.

Combined motions, oppositions, replies, or other

combined documents are not permitted.

(4) Signature; identiﬁcation. Documents

must be signed in accordance with §§ 1.33 and

11.18(a) of this title, and should be identiﬁed by the

trial number (where known).

(b) Modes of ﬁling.

(1) Electronic ﬁling. Unless otherwise

authorized, submissions are to be made to the Board

electronically via the Internet according to the

parameters established by the Board and published

on the Web site of the Ofﬁce.

(2)(i) Filing by means other than

electronic ﬁling. A document ﬁled by means other

than electronic ﬁling must:

(A) Be accompanied by a motion

requesting acceptance of the submission; and

(B) Identify a date of transmission

where a party seeks a ﬁling date other than the date

of receipt at the Board.

(ii) Mailed correspondence shall be sent

to: Mail Stop PATENT BOARD, Patent Trial and

Appeal Board, United States Patent and Trademark

Ofﬁce, PO Box 1450, Alexandria, Virginia

22313–1450.

the ﬁrst document in which it is cited except as the

Board may otherwise order.

(d) Previously ﬁled paper. A document already

in the record of the proceeding must not be ﬁled

again, not even as an exhibit or an appendix, without

express Board authorization.

(e) Service.

(1) Electronic or other mode. Service may

be made electronically upon agreement of the

parties. Otherwise, service may be by Priority Mail

Express® or by means at least as fast and reliable

as Priority Mail Express®.

January 2018R-419

§ 42.6CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(2) Simultaneous with ﬁling. Each document

ﬁled with the Board, if not previously served, must

be served simultaneously on each opposing party.

(3) Counsel of record. If a party is

represented by counsel of record in the proceeding,

service must be on counsel.

(4) Certiﬁcate of service.

(i) Each document, other than an exhibit,

must include a certiﬁcate of service at the end of

that document. Any exhibit ﬁled with the document

may be included in the certiﬁcation for the

document.

(ii) For an exhibit ﬁled separately, a

transmittal letter incorporating the certiﬁcate of

service must be ﬁled. If more than one exhibit is

ﬁled at one time, a single letter should be used for

all of the exhibits ﬁled together. The letter must

state the name and exhibit number for every exhibit

ﬁled with the letter.

(iii) The certiﬁcate of service must state:

(A) The date and manner of service;

and

(B) The name and address of every

person served.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; para. (e)(1) revised, 79 FR 63036, Oct.

22, 2014, effective Oct. 22, 2014; para. (a)(2)(ii) revised,

80 FR 28561, May 19, 2015, effective May 19, 2015]

§ 42.7 Management of the record.

(a) The Board may expunge any paper directed

to a proceeding or ﬁled while an application or

patent is under the jurisdiction of the Board that is

not authorized under this part or in a Board order

or that is ﬁled contrary to a Board order.

(b) The Board may vacate or hold in abeyance

any non-Board action directed to a proceeding while

an application or patent is under the jurisdiction of

the Board unless the action was authorized by the

Board.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.8 Mandatory notices.

(a) Each notice listed in paragraph (b) of this

section must be ﬁled with the Board:

(1) By the petitioner, as part of the petition;

(2) By the patent owner, or applicant in the

case of derivation, within 21 days of service of the

petition; or

(3) By either party, within 21 days of a

change of the information listed in paragraph (b) of

this section stated in an earlier paper.

(b) Each of the following notices must be ﬁled:

(1) Real party-in-interest. Identify each real

party-in-interest for the party.

(2) Related matters. Identify any other

judicial or administrative matter that would affect,

or be affected by, a decision in the proceeding.

(3) Lead and back-up counsel. If the party

is represented by counsel, then counsel must be

identiﬁed.

(4) Service information. Identify (if

applicable):

(i) An electronic mail address;

(ii) A postal mailing address;

(iii) A hand-delivery address, if different

than the postal mailing address;

(iv) A telephone number; and

(v) A facsimile number.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.9 Action by patent owner.

(a) Entire interest. An owner of the entire

interest in an involved application or patent may act

to the exclusion of the inventor (see § 3.71 of this

title).

(b) Part interest. An owner of a part interest in

the subject patent may move to act to the exclusion

of an inventor or a co-owner. The motion must show

the inability or refusal of an inventor or co-owner

to prosecute the proceeding or other cause why it is

in the interests of justice to permit the owner of a

part interest to act in the trial. In granting the motion,

the Board may set conditions on the actions of the

parties.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

R-420January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.7

§ 42.10 Counsel.

(a) If a party is represented by counsel, the party

must designate a lead counsel and at least one

back-up counsel who can conduct business on behalf

of the lead counsel.

(b) A power of attorney must be ﬁled with the

designation of counsel, except the patent owner

should not ﬁle an additional power of attorney if

the designated counsel is already counsel of record

in the subject patent or application.

vice during a proceeding upon a showing of good

cause, subject to the condition that lead counsel be

a registered practitioner and to any other conditions

as the Board may impose. For example, where the

lead counsel is a registered practitioner, a motion

to appear pro hac vice by counsel who is not a

registered practitioner may be granted upon showing

that counsel is an experienced litigating attorney

and has an established familiarity with the subject

matter at issue in the proceeding.

(d) A panel of the Board may disqualify counsel

for cause after notice and opportunity for hearing.

A decision to disqualify is not ﬁnal for the purposes

of judicial review until certiﬁed by the Chief

Administrative Patent Judge.

(e) Counsel may not withdraw from a

proceeding before the Board unless the Board

authorizes such withdrawal.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; para. (a) revised, 80 FR 28561, May 19,

2015, effective May 19, 2015]

§ 42.11 Duty of candor; signing papers;

representations to the Board; sanctions.

(a) Duty of candor. Parties and individuals

involved in the proceeding have a duty of candor

and good faith to the Ofﬁce during the course of a

proceeding.

(b) Signature. Every petition, response, written

motion, and other paper ﬁled in a proceeding must

comply with the signature requirements set forth in

§ 11.18(a) of this chapter. The Board may expunge

any unsigned submission unless the omission is

promptly corrected after being called to the

counsel’s or party’s attention.

to the Board a petition, response, written motion, or

other paper—whether by signing, ﬁling, submitting,

or later advocating it—an attorney, registered

practitioner, or unrepresented party attests to

compliance with the certiﬁcation requirements under

§ 11.18(b)(2) of this chapter.

(d) Sanctions—

(1) In general. If, after notice and a

reasonable opportunity to respond, the Board

determines that paragraph (c) of this section has

been violated, the Board may impose an appropriate

sanction on any attorney, registered practitioner, or

party that violated the rule or is responsible for the

violation.

(2) Motion for sanctions. A motion for

sanctions must be made separately from any other

motion and must describe the speciﬁc conduct that

allegedly violates paragraph (c) of this section. The

motion must be authorized by the Board under §

42.20 prior to ﬁling the motion. At least 21 days

prior to seeking authorization to ﬁle a motion for

sanctions, the moving party must serve the other

party with the proposed motion. A motion for

sanctions must not be ﬁled or be presented to the

Board if the challenged paper, claim, defense,

contention, or denial is withdrawn or appropriately

corrected within 21 days after service of such motion

or within another time the Board sets. If warranted,

the Board may award to the prevailing party the

reasonable expenses, including attorney’s fees,

incurred for the motion.

(3) On the Board’s initiative. On its own,

the Board may order an attorney, registered

practitioner, or party to show cause why conduct

speciﬁcally described in the order has not violated

paragraph (c) of this section and why a speciﬁc

sanction authorized by the Board should not be

imposed.

(4) Nature of a sanction. A sanction

imposed under this rule must be limited to what

sufﬁces to deter repetition of the conduct or

comparable conduct by others similarly situated and

should be consistent with § 42.12.

(5) Requirements for an order. An order

imposing a sanction must describe the sanctioned

conduct and explain the basis for the sanction.

January 2018R-421

§ 42.11CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; revised, 81 FR 18750, Apr. 1, 2016,

effective May 2, 2016]

§ 42.12 Sanctions.

(a) The Board may impose a sanction against a

party for misconduct, including:

(1) Failure to comply with an applicable rule

or order in the proceeding;

(2) Advancing a misleading or frivolous

argument or request for relief;

(3) Misrepresentation of a fact;

(4) Engaging in dilatory tactics;

(5) Abuse of discovery;

(6) Abuse of process; or

(7) Any other improper use of the

proceeding, including actions that harass or cause

unnecessary delay or an unnecessary increase in the

cost of the proceeding.

(b) Sanctions include entry of one or more of

the following:

An order holding facts to have been

established in the proceeding;

(2) An order expunging or precluding a party

from ﬁling a paper;

(3) An order precluding a party from

presenting or contesting a particular issue;

(4) An order precluding a party from

requesting, obtaining, or opposing discovery;

(5) An order excluding evidence;

(6) An order providing for compensatory

expenses, including attorney fees;

(7) An order requiring terminal disclaimer

of patent term; or

(8) Judgment in the trial or dismissal of the

petition.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.13 Citation of authority.

(a) For any United States Supreme Court

decision, citation to the United States Reports is

preferred.

(b) For any decision other than a United States

Supreme Court decision, citation to the West

Reporter System is preferred.

citations whenever a speciﬁc holding or portion of

an authority is invoked.

(d) Non-binding authority should be used

sparingly. If the authority is not an authority of the

Ofﬁce and is not reproduced in the United States

Reports or the West Reporter System, a copy of the

authority should be provided.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.14 Public availability.

The record of a proceeding, including documents

and things, shall be made available to the public,

except as otherwise ordered. A party intending a

document or thing to be sealed shall ﬁle a motion

to seal concurrent with the ﬁling of the document

or thing to be sealed. The document or thing shall

be provisionally sealed on receipt of the motion and

remain so pending the outcome of the decision on

the motion.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

FEES

§ 42.15 Fees.

(a) On ﬁling a petition for inter partes review

of a patent, payment of the following fees are due:

(1) Inter Partes Review request

fee:........................................................$15,500.00.

(2) Inter Partes Review Post-Institution

fee:........................................................$15,000.00.

(3) In addition to the Inter Partes Review

request fee, for requesting review of each claim in

excess of 20:..............................................$300.00.

(4) In addition to the Inter Partes

Post-Institution request fee, for requesting review

of each claim in excess of 15:...................$600.00.

(b) On ﬁling a petition for post-grant review or

covered business method patent review of a patent,

payment of the following fees are due:

R-422January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.12

(1) Post-Grant or Covered Business Method

Patent Review request fee:...................$16,000.00.

(2) Post-Grant or Covered Business Method

Patent Review Post-Institution fee:......$22,000.00.

(3) In addition to the Post-Grant or Covered

Business Method Patent Review request fee, for

requesting review of each claim in excess of

20:..............................................................$375.00.

(4) In addition to the Post-Grant or Covered

Business Method Patent Review Post-Institution

fee, for requesting review of each claim in excess

of 15:.........................................................$825.00.

proceeding, payment of the following fees is due:

(1) Derivation petition fee:.............$400.00.

(d) Any request requiring payment of a fee under

this part, including a written request to make a

settlement agreement available:................$400.00.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; revised, 78 FR 4212, Jan. 18, 2013,

effective Mar. 19, 2013; paras. (a)(3), (a)(4), (b)(3), and

(b)(4) revised, 80 FR 28561, May 19, 2015, effective

May 19, 2015; paras. (a) and (b) revised, 82 FR 52780,

Nov. 14, 2017, effective Jan. 16, 2018]

PETITION AND MOTION PRACTICE

§ 42.20 Generally.

(a) Relief. Relief, other than a petition

requesting the institution of a trial, must be requested

in the form of a motion.

(b) Prior authorization. A motion will not be

entered without Board authorization. Authorization

may be provided in an order of general applicability

or during the proceeding.

burden of proof to establish that it is entitled to the

requested relief.

(d) Brieﬁng. The Board may order brieﬁng on

any issue involved in the trial.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.21 Notice of basis for relief.

(a) Notice of request for relief. The Board may

require a party to ﬁle a notice stating the relief it

requests and the basis for its entitlement to relief.

A notice must include sufﬁcient detail to place the

Board and each opponent on notice of the precise

relief requested. A notice is not evidence except as

an admission by a party-opponent.

(b) Filing and service. The Board may set the

times and conditions for ﬁling and serving notices

required under this section. The Board may provide

for the notice ﬁled with the Board to be maintained

in conﬁdence for a limited time.

this section is required:

(1) A failure to state a sufﬁcient basis for

relief may result in a denial of the relief requested;

(2) A party will be limited to ﬁling motions

consistent with the notice; and

(3) Ambiguities in the notice will be

construed against the party.

(d) Correction. A party may move to correct

its notice. The motion should be ﬁled promptly after

the party becomes aware of the basis for the

correction. A correction ﬁled after the time set for

ﬁling notices will only be entered if entry would

serve the interests of justice.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.22 Content of petitions and motions.

(a) Each petition or motion must be ﬁled as a

separate paper and must include:

(1) A statement of the precise relief

requested; and

(2) A full statement of the reasons for the

relief requested, including a detailed explanation of

the signiﬁcance of the evidence including material

facts, and the governing law, rules, and precedent.

(b) Relief requested. Where a rule in part 1 of

this title ordinarily governs the relief sought, the

petition or motion must make any showings required

under that rule in addition to any showings required

in this part.

January 2018R-423

§ 42.22CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

or motion may include a statement of material fact.

Each material fact preferably shall be set forth as a

separately numbered sentence with speciﬁc citations

to the portions of the record that support the fact.

(d) The Board may order additional showings

or explanations as a condition for authorizing a

motion (see § 42.20(b)).

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.23 Oppositions and replies.

(a) Oppositions and replies must comply with

the content requirements for motions and, if the

paper to which the opposition or reply is responding

contains a statement of material fact, must include

a listing of facts that are admitted, denied, or cannot

be admitted or denied. Any material fact not

speciﬁcally denied may be considered admitted.

(b) All arguments for the relief requested in a

motion must be made in the motion. A reply may

only respond to arguments raised in the

corresponding opposition, patent owner preliminary

response, or patent owner response.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; para. (a) ﬁrst sentence revised, 80 FR

28561, May 19, 2015, effective May 19, 2015; para. (b)

revised, 81 FR 18750, Apr. 1, 2016, effective May 2,

2016]

§ 42.24 Type-volume or page-limits for

petitions, motions, oppositions, and replies.

(a) Petitions and motions.

(1) The following word counts or page limits

for petitions and motions apply and include any

statement of material facts to be admitted or denied

in support of the petition or motion. The word count

or page limit does not include a table of contents, a

table of authorities, mandatory notices under § 42.8,

a certiﬁcate of service or word count, or appendix

of exhibits or claim listing.

(i) Petition requesting inter partes

review: 14,000 words.

(ii) Petition requesting post-grant review:

18,700 words.

(iii) Petition requesting covered business

method patent review: 18,700 words.

(iv) Petition requesting derivation

proceeding: 14,000 words.

(v) Motions (excluding motions to

amend): 15 pages.

(vi) Motions to Amend: 25 pages.

(2) Petitions to institute a trial must comply

with the stated word counts but may be accompanied

by a motion to waive the word counts. The petitioner

must show in the motion how a waiver of the word

counts is in the interests of justice and must append

a copy of proposed petition exceeding the word

count to the motion. If the motion is not granted,

the proposed petition exceeding the word count may

be expunged or returned. Any other motion to waive

word counts or page limits must be granted in

advance of ﬁling a motion, opposition, or reply for

which the waiver is necessary.

(b) Patent owner responses and oppositions.

The word counts or page limits set forth in this

paragraph (b) do not include a listing of facts which

are admitted, denied, or cannot be admitted or

denied.

(1) The word counts for a patent owner

preliminary response to petition are the same as the

word counts for the petition.

(2) The word counts for a patent owner

response to petition are the same as the word counts

for the petition.

(3) The page limits for oppositions are the

same as those for corresponding motions.

limits for replies apply and include any statement

of facts in support of the reply. The word counts or

page limits do not include a table of contents, a table

of authorities, a listing of facts which are admitted,

denied, or cannot be admitted or denied, a certiﬁcate

of service or word count, or appendix of exhibits.

(1) Replies to patent owner responses to

petitions: 5,600 words.

(2) Replies to oppositions (excluding replies

to oppositions to motions to amend): 5 pages.

(3) Replies to oppositions to motions to

amend: 12 pages.

(d) Certiﬁcation. Any paper whose length is

speciﬁed by type-volume limits must include a

certiﬁcation stating the number of words in the

R-424January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.23

paper. A party may rely on the word count of the

word-processing system used to prepare the paper.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; para. (a)(1) introductory text, para.

(a)(1)(v), para. (c) introductory text ﬁrst sentence, and

paras. (c)(1) and (c)(2) revised and paras. (a)(1)(vi) and

(c)(3) added, 80 FR 28561, May 19, 2015, effective May

19, 2015; revised, 81 FR 18750, Apr. 1, 2016, effective

May 2, 2016; para. (a)(1) corrected, 81 FR 24702, Apr.

27, 2016, effective May 2, 2016]

§ 42.25 Default ﬁling times.

(a) A motion may only be ﬁled according to a

schedule set by the Board. The default times for

acting are:

(1) An opposition is due one month after

service of the motion; and

(2) A reply is due one month after service

of the opposition.

(b) A party should seek relief promptly after the

need for relief is identiﬁed. Delay in seeking relief

may justify a denial of relief sought.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

TESTIMONY AND PRODUCTION

§ 42.51 Discovery.

(a) Mandatory initial disclosures.

(1) With agreement. Parties may agree to

mandatory discovery requiring the initial disclosures

set forth in the Ofﬁce Patent Trial Practice Guide.

(i) The parties must submit any

agreement reached on initial disclosures by no later

than the ﬁling of the patent owner preliminary

response or the expiration of the time period for

ﬁling such a response. The initial disclosures of the

parties shall be ﬁled as exhibits.

(ii) Upon the institution of a trial, parties

may automatically take discovery of the information

identiﬁed in the initial disclosures.

(2) Without agreement. Where the parties

fail to agree to the mandatory discovery set forth in

paragraph (a)(1), a party may seek such discovery

by motion.

(b) Limited discovery. A party is not entitled to

discovery except as provided in paragraph (a) of

this section, or as otherwise authorized in this

subpart.

(1) Routine discovery. Except as the Board

may otherwise order:

(i) Unless previously served or otherwise

by agreement of the parties, any exhibit cited in a

paper or in testimony must be served with the citing

paper or testimony.

(ii) Cross examination of afﬁdavit

testimony prepared for the proceeding is authorized

within such time period as the Board may set.

(iii) Unless previously served, a party

must serve relevant information that is inconsistent

with a position advanced by the party during the

proceeding concurrent with the ﬁling of the

documents or things that contains the inconsistency.

This requirement does not make discoverable

anything otherwise protected by legally recognized

privileges such as attorney-client or attorney work

product. This requirement extends to inventors,

corporate ofﬁcers, and persons involved in the

preparation or ﬁling of the documents or things.

(2) Additional discovery.

(i) The parties may agree to additional

discovery between themselves. Where the parties

fail to agree, a party may move for additional

discovery. The moving party must show that such

additional discovery is in the interests of justice,

except in post-grant reviews where additional

discovery is limited to evidence directly related to

factual assertions advanced by either party in the

proceeding (see § 42.224). The Board may specify

conditions for such additional discovery.

(ii) When appropriate, a party may obtain

production of documents and things during cross

examination of an opponent’s witness or during

authorized compelled testimony under § 42.52.

otherwise ordered by the Board, a party producing

documents and things shall either provide copies to

the opposing party or make the documents and

things available for inspection and copying at a

reasonable time and location in the United States.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; para. (b)(1)(ii) revised, 80 FR 28561,

May 19, 2015, effective May 19, 2015]

January 2018R-425

§ 42.51CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 42.52 Compelling testimony and

production.

(a) Authorization required. A party seeking to

compel testimony or production of documents or

things must ﬁle a motion for authorization. The

motion must describe the general relevance of the

testimony, document, or thing, and must:

(1) In the case of testimony, identify the

witness by name or title; and

(2) In the case of a document or thing, the

general nature of the document or thing.

(b) Outside the United States. For testimony or

production sought outside the United States, the

motion must also:

(1) In the case of testimony.

(i) Identify the foreign country and

explain why the party believes the witness can be

compelled to testify in the foreign country, including

a description of the procedures that will be used to

compel the testimony in the foreign country and an

estimate of the time it is expected to take to obtain

the testimony; and

(ii) Demonstrate that the party has made

reasonable efforts to secure the agreement of the

witness to testify in the United States but has been

unsuccessful in obtaining the agreement, even

though the party has offered to pay the travel

expenses of the witness to testify in the United

States.

(2) In the case of production of a document

or thing.

(i) Identify the foreign country and

explain why the party believes production of the

document or thing can be compelled in the foreign

country, including a description of the procedures

that will be used to compel production of the

document or thing in the foreign country and an

estimate of the time it is expected to take to obtain

production of the document or thing; and

(ii) Demonstrate that the party has made

reasonable efforts to obtain the agreement of the

individual or entity having possession, custody, or

control of the document or thing to produce the

document or thing in the United States but has been

unsuccessful in obtaining that agreement, even

though the party has offered to pay the expenses of

producing the document or thing in the United

States.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.53 Taking testimony.

(a) Form. Uncompelled direct testimony must

be submitted in the form of an afﬁdavit. All other

testimony, including testimony compelled under 35

U.S.C. 24, must be in the form of a deposition

transcript. Parties may agree to video-recorded

testimony, but may not submit such testimony

without prior authorization of the Board. In addition,

the Board may authorize or require live or

video-recorded testimony.

(b) Time and location.

(1) Uncompelled direct testimony may be

taken at any time to support a petition, motion,

opposition, or reply; otherwise, testimony may only

be taken during a testimony period set by the Board.

(2) Except as the Board otherwise orders,

during the testimony period, deposition testimony

may be taken at any reasonable time and location

within the United States before any disinterested

ofﬁcial authorized to administer oaths at that

location.

(3) Uncompelled deposition testimony

outside the United States may only be taken upon

agreement of the parties or as the Board speciﬁcally

directs.

(1) Unless stipulated by the parties or

ordered by the Board, direct examination,

cross-examination, and redirect examination for

compelled deposition testimony shall be subject to

the following time limits: Seven hours for direct

examination, four hours for cross-examination, and

two hours for redirect examination.

(2) Unless stipulated by the parties or

ordered by the Board, cross-examination, redirect

examination, and re-cross examination for

uncompelled direct testimony shall be subject to the

follow time limits: Seven hours for

cross-examination, four hours for redirect

examination, and two hours for re-cross

examination.

(d) Notice of deposition.

R-426January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.52

(1) Prior to the taking of deposition

testimony, all parties to the proceeding must agree

on the time and place for taking testimony. If the

parties cannot agree, the party seeking the testimony

must initiate a conference with the Board to set a

time and place.

(2) Cross-examination should ordinarily take

place after any supplemental evidence relating to

the direct testimony has been ﬁled and more than a

week before the ﬁling date for any paper in which

the cross-examination testimony is expected to be

used. A party requesting cross-examination

testimony of more than one witness may choose the

order in which the witnesses are to be

cross-examined.

(3) In the case of direct deposition testimony,

at least three business days prior to the conference

in paragraph (d)(1) of this section, or if there is no

conference, at least ten days prior to the deposition,

the party seeking the direct testimony must serve:

(i) A list and copy of each document

under the party’s control and on which the party

intends to rely; and

(ii) A list of, and proffer of reasonable

access to, anything other than a document under the

party’s control and on which the party intends to

rely.

(4) The party seeking the deposition must

ﬁle a notice of the deposition at least ten business

days before a deposition.

(5) Scope and content—

(i) For direct deposition testimony, the

notice limits the scope of the testimony and must

list:

(A) The time and place of the

deposition;

(B) The name and address of the

witness;

upon during the deposition; and

(D) A general description of the

scope and nature of the testimony to be elicited.

(ii) For cross-examination testimony, the

scope of the examination is limited to the scope of

the direct testimony.

(iii) The notice must list the time and

place of the deposition.

(iv) Where an additional party seeks to

take direct testimony of a third party witness at the

time and place noticed in paragraph (d)(5) of this

section, the additional party must provide a counter

notice that lists the exhibits to be relied upon in the

deposition and a general description of the scope

and nature of the testimony to be elicited.

(6) Motion to quash—Objection to a defect

in the notice is waived unless the objecting party

promptly seeks authorization to ﬁle a motion to

quash.

(e) Deposition in a foreign language. If an

interpreter will be used during the deposition, the

party calling the witness must initiate a conference

with the Board at least ﬁve business days before the

deposition.

(f) Manner of taking deposition testimony.

(1) Before giving deposition testimony, each

witness shall be duly sworn according to law by the

ofﬁcer before whom the deposition is to be taken.

The ofﬁcer must be authorized to take testimony

under 35 U.S.C. 23.

(2) The testimony shall be taken with any

questions and answers recorded in their regular order

by the ofﬁcer, or by some other disinterested person

in the presence of the ofﬁcer, unless the presence

of the ofﬁcer is waived on the record by agreement

of all parties.

(3) Any exhibits used during the deposition

must be numbered as required by § 42.63(c), and

must, if not previously served, be served at the

deposition. Exhibits objected to shall be accepted

pending a decision on the objection.

(4) All objections made at the time of the

deposition to the qualiﬁcations of the ofﬁcer taking

the deposition, the manner of taking it, the evidence

presented, the conduct of any party, and any other

objection to the deposition shall be noted on the

record by the ofﬁcer.

(5) When the testimony has been transcribed,

the witness shall read and sign (in the form of an

afﬁdavit) a transcript of the deposition unless:

(i) The parties otherwise agree in writing;

January 2018R-427

§ 42.53CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(ii) The parties waive reading and

signature by the witness on the record at the

deposition; or

(iii) The witness refuses to read or sign

the transcript of the deposition.

(6) The ofﬁcer shall prepare a certiﬁed

transcript by attaching a certiﬁcate in the form of

an afﬁdavit signed and sealed by the ofﬁcer to the

transcript of the deposition. Unless the parties waive

any of the following requirements, in which case

the certiﬁcate shall so state, the certiﬁcate must

state:

(i) The witness was duly sworn by the

ofﬁcer before commencement of testimony by the

witness;

(ii) The transcript is a true record of the

testimony given by the witness;

(iii) The name of the person who

recorded the testimony, and if the ofﬁcer did not

record it, whether the testimony was recorded in the

presence of the ofﬁcer;

(iv) The presence or absence of any

opponent;

(v) The place where the deposition was

taken and the day and hour when the deposition

began and ended;

(vi) The ofﬁcer has no disqualifying

interest, personal or ﬁnancial, in a party; and

(vii) If a witness refuses to read or sign

the transcript, the circumstances under which the

witness refused.

(7) Except where the parties agree otherwise,

the proponent of the testimony must arrange for

providing a copy of the transcript to all other parties.

The testimony must be ﬁled as an exhibit.

(8) Any objection to the content, form, or

manner of taking the deposition, including the

qualiﬁcations of the ofﬁcer, is waived unless made

on the record during the deposition and preserved

in a timely ﬁled motion to exclude.

(g) Costs. Except as the Board may order or

the parties may agree in writing, the proponent of

the direct testimony shall bear all costs associated

with the testimony, including the reasonable costs

associated with making the witness available for the

cross-examination.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; paras. (c)(2) and (f)(7) revised, 80 FR

28561, May 19, 2015, effective May 19, 2015]

§ 42.54 Protective order.

(a) A party may ﬁle a motion to seal where the

motion to seal contains a proposed protective order,

such as the default protective order set forth in the

Ofﬁce Patent Trial Practice Guide. The motion must

include a certiﬁcation that the moving party has in

good faith conferred or attempted to confer with

other affected parties in an effort to resolve the

dispute. The Board may, for good cause, issue an

order to protect a party or person from disclosing

conﬁdential information, including, but not limited

to, one or more of the following:

(1) Forbidding the disclosure or discovery;

(2) Specifying terms, including time and

place, for the disclosure or discovery;

(3) Prescribing a discovery method other

than the one selected by the party seeking discovery;

(4) Forbidding inquiry into certain matters,

or limiting the scope of disclosure or discovery to

certain matters;

(5) Designating the persons who may be

present while the discovery is conducted;

(6) Requiring that a deposition be sealed and

opened only by order of the Board;

(7) Requiring that a trade secret or other

conﬁdential research, development, or commercial

information not be revealed or be revealed only in

a speciﬁed way; and

(8) Requiring that the parties simultaneously

ﬁle speciﬁed documents or information in sealed

envelopes, to be opened as the Board directs.

(b) [Reserved].

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.55 Conﬁdential information in a

petition.

A petitioner ﬁling conﬁdential information with a

petition may, concurrent with the ﬁling of the

petition, ﬁle a motion to seal with a proposed

protective order as to the conﬁdential information.

R-428January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.54

The institution of the requested trial will constitute

a grant of the motion to seal unless otherwise

ordered by the Board.

(a) Default protective order. Where a motion

to seal requests entry of the default protective order

set forth in the Ofﬁce Patent Trial Practice Guide,

the petitioner must ﬁle, but need not serve, the

conﬁdential information under seal. The patent

owner may only access the ﬁled sealed information

prior to the institution of the trial by agreeing to the

terms of the default protective order or obtaining

relief from the Board.

(b) Protective orders other than default

protective order. Where a motion to seal requests

entry of a protective order other than the default

protective order, the petitioner must ﬁle, but need

not serve, the conﬁdential information under seal.

The patent owner may only access the sealed

conﬁdential information prior to the institution of

the trial by:

(1) agreeing to the terms of the protective

order requested by the petitioner;

(2) agreeing to the terms of a protective

order that the parties ﬁle jointly; or

(3) obtaining entry of a protective order (e.g.,

the default protective order).

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.56 Expungement of conﬁdential

information.

After denial of a petition to institute a trial or after

ﬁnal judgment in a trial, a party may ﬁle a motion

to expunge conﬁdential information from the record.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.57 Privilege for patent practitioners.

(a) Privileged communications. A

communication between a client and a USPTO

patent practitioner or a foreign jurisdiction patent

practitioner that is reasonably necessary and incident

to the scope of the practitioner's authority shall

receive the same protections of privilege under

Federal law as if that communication were between

a client and an attorney authorized to practice in the

United States, including all limitations and

exceptions.

(b) Deﬁnitions. The term "USPTO patent

practitioner" means a person who has fulﬁlled the

requirements to practice patent matters before the

United States Patent and Trademark Ofﬁce under §

11.7 of this chapter. "Foreign jurisdiction patent

practitioner" means a person who is authorized to

provide legal advice on patent matters in a foreign

jurisdiction, provided that the jurisdiction establishes

professional qualiﬁcations and the practitioner

satisﬁes them. For foreign jurisdiction practitioners,

this rule applies regardless of whether that

jurisdiction provides privilege or an equivalent under

its laws.

practitioners and foreign jurisdiction patent

practitioners shall receive the same treatment as

attorneys on all issues affecting privilege or waiver,

such as communications with employees or

assistants of the practitioner and communications

between multiple practitioners.

[Added, 82 FR 51570, Nov. 7, 2017, effective Dec.

7, 2017]

§ 42.61 Admissibility.

(a) Evidence that is not taken, sought, or ﬁled

in accordance with this subpart is not admissible.

(b) Records of the Ofﬁce. Certiﬁcation is not

necessary as a condition to admissibility when the

evidence to be submitted is a record of the Ofﬁce

to which all parties have access.

or drawing of a United States patent application or

patent is admissible as evidence only to prove what

the speciﬁcation or drawing describes. If there is

data in the speciﬁcation or a drawing upon which a

party intends to rely to prove the truth of the data,

an afﬁdavit by an individual having ﬁrst-hand

knowledge of how the data was generated must be

ﬁled.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

January 2018R-429

§ 42.61CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

§ 42.62 Applicability of the Federal rules of

evidence.

(a) Generally. Except as otherwise provided in

this subpart, the Federal Rules of Evidence shall

apply to a proceeding.

(b) Exclusions. Those portions of the Federal

Rules of Evidence relating to criminal proceedings,

juries, and other matters not relevant to proceedings

under this subpart shall not apply.

otherwise clear from context, the following terms

of the Federal Rules of Evidence shall be construed

as indicated:

Appellate court means United States Court

of Appeals for the Federal Circuit.

Civil action, civil proceeding, and action

mean a proceeding before the Board under part 42.

Courts of the United States, U.S.

Magistrate, court, trial court, trier of fact, and

judge mean Board.

Hearing means, as deﬁned in Federal Rule

of Evidence 804(a)(5), the time for taking testimony.

Judicial notice means ofﬁcial notice.

Trial or hearing in Federal Rule of

Evidence 807 means the time for taking testimony.

(d) In determining foreign law, the Board may

consider any relevant material or source, including

testimony, whether or not submitted by a party or

admissible under the Federal Rules of Evidence.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.63 Form of evidence.

(a) Exhibits required. Evidence consists of

afﬁdavits, transcripts of depositions, documents,

and things. All evidence must be ﬁled in the form

of an exhibit.

(b) Translation required. When a party relies

on a document or is required to produce a document

in a language other than English, a translation of the

document into English and an afﬁdavit attesting to

the accuracy of the translation must be ﬁled with

the document.

must be uniquely numbered sequentially in a range

the Board speciﬁes. For the petitioner, the range is

1001–1999, and for the patent owner, the range is

2001–2999.

(d) Exhibit format. An exhibit must conform

with the requirements for papers in § 42.6 and the

requirements of this paragraph.

(1) Each exhibit must have an exhibit label.

(i) An exhibit ﬁled with the petition must

include the petitioner’s name followed by a unique

exhibit number.

(ii) For exhibits not ﬁled with the

petition, the exhibit label must include the party’s

name followed by a unique exhibit number, the

names of the parties, and the trial number.

(2) When the exhibit is a paper:

(i) Each page must be uniquely numbered

in sequence; and

(ii) The exhibit label must be afﬁxed to

the lower right corner of the ﬁrst page of the exhibit

without obscuring information on the ﬁrst page or,

if obscuring is unavoidable, afﬁxed to a duplicate

ﬁrst page.

(e) Exhibit list. Each party must maintain an

exhibit list with the exhibit number and a brief

description of each exhibit. If the exhibit is not ﬁled,

the exhibit list should note that fact. A current

exhibit list must be served whenever evidence is

served and the current exhibit list must be ﬁled when

ﬁling exhibits.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.64 Objection; motion to exclude.

(a) Deposition evidence. An objection to the

admissibility of deposition evidence must be made

during the deposition. Evidence to cure the objection

must be provided during the deposition, unless the

parties to the deposition stipulate otherwise on the

deposition record.

(b) Other evidence. For evidence other than

deposition evidence:

(1) Objection. Any objection to evidence

submitted during a preliminary proceeding must be

ﬁled within ten business days of the institution of

R-430January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.62

the trial. Once a trial has been instituted, any

objection must be ﬁled within ﬁve business days of

service of evidence to which the objection is

directed. The objection must identify the grounds

for the objection with sufﬁcient particularity to allow

correction in the form of supplemental evidence.

(2) Supplemental evidence. The party

relying on evidence to which an objection is timely

served may respond to the objection by serving

supplemental evidence within ten business days of

service of the objection.

evidence must be ﬁled to preserve any objection.

The motion must identify the objections in the

record in order and must explain the objections. The

motion may be ﬁled without prior authorization

from the Board.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; section heading and ﬁrst two sentences

of para. (b)(1) revised, 80 FR 28561, May 19, 2015,

effective May 19, 2015]

§ 42.65 Expert testimony; tests and data.

(a) Expert testimony that does not disclose the

underlying facts or data on which the opinion is

based is entitled to little or no weight. Testimony

on United States patent law or patent examination

practice will not be admitted.

(b) If a party relies on a technical test or data

from such a test, the party must provide an afﬁdavit

explaining:

(1) Why the test or data is being used;

(2) How the test was performed and the data

was generated;

(3) How the data is used to determine a

value;

(4) How the test is regarded in the relevant

art; and

(5) Any other information necessary for the

Board to evaluate the test and data.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

ORAL ARGUMENT, DECISION, AND

SETTLEMENT

§ 42.70 Oral argument.

(a) Request for oral argument. A party may

request oral argument on an issue raised in a paper

at a time set by the Board. The request must be ﬁled

as a separate paper and must specify the issues to

be argued.

(b) Demonstrative exhibits must be served at

least seven business days before the oral argument

and ﬁled no later than the time of the oral argument.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; para. (b) revised, 81 FR 18750, Apr. 1,

2016, effective May 2, 2016]

§ 42.71 Decision on petitions or motions.

(a) Order of consideration. The Board may take

up petitions or motions for decisions in any order,

may grant, deny, or dismiss any petition or motion,

and may enter any appropriate order.

(b) Interlocutory decisions. A decision on a

motion without a judgment is not ﬁnal for the

purposes of judicial review. If a decision is not a

panel decision, the party may request that a panel

rehear the decision. When rehearing a non-panel

decision, a panel will review the decision for an

abuse of discretion. A panel decision on an issue

will govern the trial.

on whether to institute a trial is ﬁnal and

nonappealable. A party may request rehearing on a

decision by the Board on whether to institute a trial

pursuant to paragraph (d) of this section. When

rehearing a decision on petition, a panel will review

the decision for an abuse of discretion.

(d) Rehearing. A party dissatisﬁed with a

decision may ﬁle a single request for rehearing

without prior authorization from the Board. The

burden of showing a decision should be modiﬁed

lies with the party challenging the decision. The

request must speciﬁcally identify all matters the

party believes the Board misapprehended or

overlooked, and the place where each matter was

previously addressed in a motion, an opposition, or

a reply. A request for rehearing does not toll times

for taking action. Any request must be ﬁled:

January 2018R-431

§ 42.71CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) Within 14 days of the entry of a non-ﬁnal

decision or a decision to institute a trial as to at least

one ground of unpatentability asserted in the

petition; or

(2) Within 30 days of the entry of a ﬁnal

decision or a decision not to institute a trial.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012; para. (d) ﬁrst sentence revised, 80 FR

28561, May 19, 2015, effective May 19, 2015]

§ 42.72 Termination of trial.

The Board may terminate a trial without rendering

a ﬁnal written decision, where appropriate, including

where the trial is consolidated with another

proceeding or pursuant to a joint request under 35

U.S.C. 317(a) or 327(a).

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.73 Judgment.

(a) A judgment, except in the case of a

termination, disposes of all issues that were, or by

motion reasonably could have been, raised and

decided.

(b) Request for adverse judgment. A party may

request judgment against itself at any time during a

proceeding. Actions construed to be a request for

adverse judgment include:

(1) Disclaimer of the involved application

or patent;

(2) Cancellation or disclaimer of a claim

such that the party has no remaining claim in the

trial;

(3) Concession of unpatentability or

derivation of the contested subject matter; and

(4) Abandonment of the contest.

include a recommendation for further action by an

examiner or by the Director.

(d) Estoppel.

(1) Petitioner other than in derivation

proceeding. A petitioner, or the real party in interest

or privy of the petitioner, is estopped in the Ofﬁce

from requesting or maintaining a proceeding with

respect to a claim for which it has obtained a ﬁnal

written decision on patentability in an inter partes

review, post-grant review, or a covered business

method patent review, on any ground that the

petitioner raised or reasonably could have raised

during the trial, except that estoppel shall not apply

to a petitioner, or to the real party in interest or privy

of the petitioner who has settled under 35 U.S.C.

317 or 327.

(2) In a derivation, the losing party who

could have properly moved for relief on an issue,

but did not so move, may not take action in the

Ofﬁce after the judgment that is inconsistent with

that party’s failure to move, except that a losing

party shall not be estopped with respect to any

contested subject matter for which that party was

awarded a favorable judgment.

(3) Patent applicant or owner. A patent

applicant or owner is precluded from taking action

inconsistent with the adverse judgment, including

obtaining in any patent:

(i) A claim that is not patentably distinct

from a ﬁnally refused or canceled claim; or

(ii) An amendment of a speciﬁcation or

of a drawing that was denied during the trial

proceeding, but this provision does not apply to an

application or patent that has a different written

description.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.74 Settlement.

(a) Board role. The parties may agree to settle

any issue in a proceeding, but the Board is not a

party to the settlement and may independently

determine any question of jurisdiction, patentability,

or Ofﬁce practice.

(b) Agreements in writing. Any agreement or

understanding between the parties made in

connection with, or in contemplation of, the

termination of a proceeding shall be in writing and

a true copy shall be ﬁled with the Board before the

termination of the trial.

settlement may request that the settlement be treated

as business conﬁdential information and be kept

separate from the ﬁles of an involved patent or

application. The request must be ﬁled with the

R-432January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.72

settlement. If a timely request is ﬁled, the settlement

shall only be available:

(1) To a Government agency on written

request to the Board; or

(2) To any other person upon written request

to the Board to make the settlement agreement

available, along with the fee speciﬁed in § 42.15(d)

and on a showing of good cause.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

CERTIFICATE

§ 42.80 Certiﬁcate.

After the Board issues a ﬁnal written decision in an

inter partes review, post-grant review, or covered

business method patent review and the time for

appeal has expired or any appeal has terminated,

the Ofﬁce will issue and publish a certiﬁcate

canceling any claim of the patent ﬁnally determined

to be unpatentable, conﬁrming any claim of the

patent determined to be patentable, and

incorporating in the patent any new or amended

claim determined to be patentable by operation of

the certiﬁcate.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

Subpart B — Inter Partes Review

GENERAL

§ 42.100 Procedure; pendency.

(a) An inter partes review is a trial subject to

the procedures set forth in subpart A of this part.

(b) A claim in an unexpired patent that will not

expire before a ﬁnal written decision is issued shall

be given its broadest reasonable construction in light

of the speciﬁcation of the patent in which it appears.

A party may request a district court-type claim

construction approach to be applied if a party

certiﬁes that the involved patent will expire within

18 months from the entry of the Notice of Filing

Date Accorded to Petition. The request,

accompanied by a party’s certiﬁcation, must be

made in the form of a motion under § 42.20, within

30 days from the ﬁling of the petition.

administered such that pendency before the Board

after institution is normally no more than one year.

The time can be extended by up to six months for

good cause by the Chief Administrative Patent

Judge, or adjusted by the Board in the case of

joinder.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (b) revised, 81 FR 18750, Apr. 1,

2016, effective May 2, 2016]

§ 42.101 Who may petition for inter partes

review.

A person who is not the owner of a patent may ﬁle

with the Ofﬁce a petition to institute an inter partes

review of the patent unless:

(a) Before the date on which the petition for

review is ﬁled, the petitioner or real party-in-interest

ﬁled a civil action challenging the validity of a claim

of the patent;

(b) The petition requesting the proceeding is

ﬁled more than one year after the date on which the

petitioner, the petitioner’s real party-in-interest, or

a privy of the petitioner is served with a complaint

alleging infringement of the patent; or

party-in-interest, or a privy of the petitioner is

estopped from challenging the claims on the grounds

identiﬁed in the petition.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.102 Time for ﬁling.

(a) A petition for inter partes review of a patent

must be ﬁled after the later of the following dates,

where applicable:

(1) If the patent is a patent described in

section 3(n)(1) of the Leahy-Smith America Invents

Act, the date that is nine months after the date of

the grant of the patent;

(2) If the patent is a patent that is not

described in section 3(n)(1) of the Leahy-Smith

American Invents Act, the date of the grant of the

patent; or

January 2018R-433

§ 42.102CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(3) If a post-grant review is instituted as set

forth in subpart C of this part, the date of the

termination of such post-grant review.

(b) The Director may impose a limit on the

number of inter partes reviews that may be

instituted during each of the ﬁrst four one-year

periods in which the amendment made to chapter

31 of title 35, United States Code, is in effect by

providing notice in the Ofﬁce’s Ofﬁcial Gazette or

Federal Register. Petitions ﬁled after an established

limit has been reached will be deemed untimely.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (a) revised, 78 FR 17873, Mar. 25,

2013, effective Mar. 25, 2013]

§ 42.103 Inter partes review fee.

(a) An inter partes review fee set forth in §

42.15(a) must accompany the petition.

(b) No ﬁling date will be accorded to the

petition until full payment is received.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.104 Content of petition.

In addition to the requirements of §§ 42.6, 42.8,

42.22, and 42.24, the petition must set forth:

(a) Grounds for standing. The petitioner must

certify that the patent for which review is sought is

available for inter partes review and that the

petitioner is not barred or estopped from requesting

an inter partes review challenging the patent claims

on the grounds identiﬁed in the petition.

(b) Identiﬁcation of challenge. Provide a

statement of the precise relief requested for each

claim challenged. The statement must identify the

following:

(1) The claim;

(2) The speciﬁc statutory grounds under 35

U.S.C. 102 or 103 on which the challenge to the

claim is based and the patents or printed publications

relied upon for each ground;

(3) How the challenged claim is to be

construed. Where the claim to be construed contains

a means-plus-function or step-plus-function

limitation as permitted under 35 U.S.C. 112(f), the

construction of the claim must identify the speciﬁc

portions of the speciﬁcation that describe the

structure, material, or acts corresponding to each

claimed function;

(4) How the construed claim is unpatentable

under the statutory grounds identiﬁed in paragraph

(b)(2) of this section. The petition must specify

where each element of the claim is found in the prior

art patents or printed publications relied upon; and

(5) The exhibit number of the supporting

evidence relied upon to support the challenge and

the relevance of the evidence to the challenge raised,

including identifying speciﬁc portions of the

evidence that support the challenge. The Board may

exclude or give no weight to the evidence where a

party has failed to state its relevance or to identify

speciﬁc portions of the evidence that support the

challenge.

a clerical or typographical mistake in the petition.

The grant of such a motion does not change the

ﬁling date of the petition.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.105 Service of petition.

In addition to the requirements of § 42.6, the

petitioner must serve the petition and exhibits relied

upon in the petition as follows:

(a) The petition and supporting evidence must

be served on the patent owner at the correspondence

address of record for the subject patent. The

petitioner may additionally serve the petition and

supporting evidence on the patent owner at any other

address known to the petitioner as likely to effect

service.

(b) Upon agreement of the parties, service may

be made electronically. Service may be by Priority

Mail Express® or by means at least as fast and

reliable as Priority Mail Express®. Personal service

is not required.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (b) revised, 79 FR 63036, Oct. 22,

2014, effective Oct. 22, 2014;]

R-434January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.103

§ 42.106 Filing date.

(a) Complete petition. A petition to institute

inter partes review will not be accorded a ﬁling

date until the petition satisﬁes all of the following

requirements:

(1) Complies with § 42.104;

(2) Effects service of the petition on the

correspondence address of record as provided in §

42.105(a); and

(3) Is accompanied by the fee to institute

required in § 42.15(a).

(b) Incomplete petition. Where a party ﬁles an

incomplete petition, no ﬁling date will be accorded,

and the Ofﬁce will dismiss the petition if the

deﬁciency in the petition is not corrected within one

month from the notice of an incomplete petition.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.107 Preliminary response to petition.

(a) The patent owner may ﬁle a preliminary

response to the petition. The response is limited to

setting forth the reasons why no inter partes review

should be instituted under 35 U.S.C. 314 and can

include supporting evidence. The preliminary

response is subject to the word count under § 42.24.

(b) Due date. The preliminary response must

be ﬁled no later than three months after the date of

a notice indicating that the request to institute an

inter partes review has been granted a ﬁling date.

A patent owner may expedite the proceeding by

ﬁling an election to waive the patent owner

preliminary response.

(d) No amendment. The preliminary response

shall not include any amendment.

(e) Disclaim Patent Claims. The patent owner

may ﬁle a statutory disclaimer under 35 U.S.C.

253(a) in compliance with § 1.321(a) of this chapter,

disclaiming one or more claims in the patent. No

inter partes review will be instituted based on

disclaimed claims.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (a) revised and para. (c) removed

and reserved, 81 FR 18750, Apr. 1, 2016, effective May

2, 2016]

INSTITUTING INTER PARTES REVIEW

§ 42.108 Institution of inter partes review.

(a) When instituting inter partes review, the

Board may authorize the review to proceed on all

or some of the challenged claims and on all or some

of the grounds of unpatentability asserted for each

claim.

(b) At any time prior to institution of inter

partes review, the Board may deny some or all

grounds for unpatentability for some or all of the

challenged claims. Denial of a ground is a Board

decision not to institute inter partes review on that

ground.

not be instituted for a ground of unpatentability

unless the Board decides that the petition supporting

the ground would demonstrate that there is a

reasonable likelihood that at least one of the claims

challenged in the petition is unpatentable. The

Board’s decision will take into account a patent

owner preliminary response where such a response

is ﬁled, including any testimonial evidence, but a

genuine issue of material fact created by such

testimonial evidence will be viewed in the light most

favorable to the petitioner solely for purposes of

deciding whether to institute an inter partes review.

A petitioner may seek leave to ﬁle a reply to the

preliminary response in accordance with §§ 42.23

and 42.24(c). Any such request must make a

showing of good cause.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (c) revised, 81 FR 18750, Apr. 1,

2016, effective May 2, 2016]

AFTER INSTITUTION OF INTER

PARTES REVIEW

§ 42.120 Patent owner response.

(a) Scope. A patent owner may ﬁle a response

to the petition addressing any ground for

unpatentability not already denied. A patent owner

response is ﬁled as an opposition and is subject to

the page limits provided in § 42.24.

January 2018R-435

§ 42.120CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(b) Due date for response. If no time for ﬁling

a patent owner response to a petition is provided in

a Board order, the default date for ﬁling a patent

owner response is three months from the date the

inter partes review was instituted.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.121 Amendment of the patent.

(a) Motion to amend. A patent owner may ﬁle

one motion to amend a patent, but only after

conferring with the Board.

(1) Due date. Unless a due date is provided

in a Board order, a motion to amend must be ﬁled

no later than the ﬁling of a patent owner response.

(2) Scope. A motion to amend may be

denied where:

(i) The amendment does not respond to

a ground of unpatentability involved in the trial; or

(ii) The amendment seeks to enlarge the

scope of the claims of the patent or introduce new

subject matter.

(3) A reasonable number of substitute claims.

A motion to amend may cancel a challenged claim

or propose a reasonable number of substitute claims.

The presumption is that only one substitute claim

would be needed to replace each challenged claim,

and it may be rebutted by a demonstration of need.

(b) Content. A motion to amend claims must

include a claim listing, which claim listing may be

contained in an appendix to the motion, show the

changes clearly, and set forth:

(1) The support in the original disclosure of

the patent for each claim that is added or amended;

and

(2) The support in an earlier-ﬁled disclosure

for each claim for which beneﬁt of the ﬁling date

of the earlier ﬁled disclosure is sought.

the requirements set forth in paragraphs (a) and (b)

of this section, any additional motion to amend may

not be ﬁled without Board authorization. An

additional motion to amend may be authorized when

there is a good cause showing or a joint request of

the petitioner and the patent owner to materially

advance a settlement. In determining whether to

authorize such an additional motion to amend, the

Board will consider whether a petitioner has

submitted supplemental information after the time

period set for ﬁling a motion to amend in paragraph

(a)(1) of this section.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (b) introductory text revised, 80 FR

28561, May 19, 2015, effective May 19, 2015]

§ 42.122 Multiple proceedings and Joinder.

(a) Multiple proceedings. Where another matter

involving the patent is before the Ofﬁce, the Board

may during the pendency of the inter partes review

enter any appropriate order regarding the additional

matter including providing for the stay, transfer,

consolidation, or termination of any such matter.

(b) Request for joinder. Joinder may be

requested by a patent owner or petitioner. Any

request for joinder must be ﬁled, as a motion under

§ 42.22, no later than one month after the institution

date of any inter partes review for which joinder

is requested. The time period set forth in § 42.101(b)

shall not apply when the petition is accompanied by

a request for joinder.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.123 Filing of supplemental information.

(a) Motion to submit supplemental information.

Once a trial has been instituted, a party may ﬁle a

motion to submit supplemental information in

accordance with the following requirements:

(1) A request for the authorization to ﬁle a

motion to submit supplemental information is made

within one month of the date the trial is instituted.

(2) The supplemental information must be

relevant to a claim for which the trial has been

instituted.

(b) Late submission of supplemental

information. A party seeking to submit supplemental

information more than one month after the date the

trial is instituted, must request authorization to ﬁle

a motion to submit the information. The motion to

submit supplemental information must show why

the supplemental information reasonably could not

have been obtained earlier, and that consideration

R-436January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.121

of the supplemental information would be in the

interests-of-justice.

seeking to submit supplemental information not

relevant to a claim for which the trial has been

instituted must request authorization to ﬁle a motion

to submit the information. The motion must show

why the supplemental information reasonably could

not have been obtained earlier, and that

consideration of the supplemental information would

be in the interests-of-justice.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

Subpart C — Post-Grant Review

GENERAL

§ 42.200 Procedure; pendency.

(a) A post-grant review is a trial subject to the

procedures set forth in subpart A of this part.

(b) A claim in an unexpired patent that will not

expire before a ﬁnal written decision is issued shall

be given its broadest reasonable construction in light

of the speciﬁcation of the patent in which it appears.

A party may request a district court-type claim

construction approach to be applied if a party

certiﬁes that the involved patent will expire within

18 months from the entry of the Notice of Filing

Date Accorded to Petition. The request,

accompanied by a party’s certiﬁcation, must be

made in the form of a motion under § 42.20, within

30 days from the ﬁling of the petition.

administered such that pendency before the Board

after institution is normally no more than one year.

The time can be extended by up to six months for

good cause by the Chief Administrative Patent

Judge, or adjusted by the Board in the case of

joinder.

(d) Interferences commenced before September

16, 2012, shall proceed under part 41 of this chapter

except as the Chief Administrative Patent Judge,

acting on behalf of the Director, may otherwise order

in the interests-of-justice.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (b) revised, 81 FR 18750, Apr. 1,

2016, effective May 2, 2016]

§ 42.201 Who may petition for a post-grant

review.

A person who is not the owner of a patent may ﬁle

with the Ofﬁce a petition to institute a post-grant

review of the patent unless:

(a) Before the date on which the petition for

review is ﬁled, the petitioner or real party-in-interest

ﬁled a civil action challenging the validity of a claim

of the patent; or

(b) The petitioner, the petitioner’s real

party-in-interest, or a privy of the petitioner is

estopped from challenging the claims on the grounds

identiﬁed in the petition.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.202 Time for ﬁling.

(a) A petition for a post-grant review of a patent

must be ﬁled no later than the date that is nine

months after the date of the grant of a patent or of

the issuance of a reissue patent. A petition, however,

may not request a post-grant review for a claim in

a reissue patent that is identical to or narrower than

a claim in the original patent from which the reissue

patent was issued unless the petition is ﬁled not later

than the date that is nine months after the date of

the grant of the original patent.

January 2018R-437

§ 42.202CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(b) The Director may impose a limit on the

number of post-grant reviews that may be instituted

during each of the ﬁrst four one-year periods in

which 35 U.S.C. 321 is in effect by providing notice

in the Ofﬁce’s Ofﬁcial Gazette or Federal Register.

Petitions ﬁled after an established limit has been

reached will be deemed untimely.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.203 Post-grant review fee.

(a) A post-grant review fee set forth in §

42.15(b) must accompany the petition.

(b) No ﬁling date will be accorded to the

petition until full payment is received.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.204 Content of petition.

In addition to the requirements of §§ 42.6, 42.8,

42.22, and 42.24, the petition must set forth:

(a) Grounds for standing. The petitioner must

certify that the patent for which review is sought is

available for post-grant review and that the petitioner

is not barred or estopped from requesting a

post-grant review challenging the patent claims on

the grounds identiﬁed in the petition.

(b) Identiﬁcation of challenge. Provide a

statement of the precise relief requested for each

claim challenged. The statement must identify the

following:

(1) The claim;

(2) The speciﬁc statutory grounds permitted

under 35 U.S.C. 282(b)(2) or (3) on which the

challenge to the claim is based;

(3) How the challenged claim is to be

construed. Where the claim to be construed contains

a means-plus-function or step-plus-function

limitation as permitted under 35 U.S.C. 112(f), the

construction of the claim must identify the speciﬁc

portions of the speciﬁcation that describe the

structure, material, or acts corresponding to each

claimed function;

(4) How the construed claim is unpatentable

under the statutory grounds identiﬁed in paragraph

(b)(2) of this section. Where the grounds for

unpatentability are based on prior art, the petition

must specify where each element of the claim is

found in the prior art. For all other grounds of

unpatentability, the petition must identify the

speciﬁc part of the claim that fails to comply with

the statutory grounds raised and state how the

identiﬁed subject matter fails to comply with the

statute; and

(5) The exhibit number of the supporting

evidence relied upon to support the challenge and

the relevance of the evidence to the challenge raised,

including identifying speciﬁc portions of the

evidence that support the challenge. The Board may

exclude or give no weight to the evidence where a

party has failed to state its relevance or to identify

speciﬁc portions of the evidence that support the

challenge.

a clerical or typographical mistake in the petition.

The grant of such a motion does not change the

ﬁling date of the petition.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

R-438January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.203

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.205 Service of petition.

In addition to the requirements of § 42.6, the

petitioner must serve the petition and exhibits relied

upon in the petition as follows:

(a) The petition and supporting evidence must

be served on the patent owner at the correspondence

address of record for the subject patent. The

petitioner may additionally serve the petition and

supporting evidence on the patent owner at any other

address known to the petitioner as likely to effect

service.

(b) Upon agreement of the parties, service may

be made electronically. Service may be by Priority

Mail Express® or by means at least as fast and

reliable as Priority Mail Express®. Personal service

is not required.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (b) revised, 79 FR 63036, Oct. 22,

2014, effective Oct. 22, 2014;]

§ 42.206 Filing date.

(a) Complete petition. A petition to institute a

post-grant review will not be accorded a ﬁling date

until the petition satisﬁes all of the following

requirements:

(1) Complies with § 42.204 or § 42.304, as

the case may be,

(2) Effects service of the petition on the

correspondence address of record as provided in §

42.205(a); and

(3) Is accompanied by the ﬁling fee in §

42.15(b).

(b) Incomplete petition. Where a party ﬁles an

incomplete petition, no ﬁling date will be accorded

and the Ofﬁce will dismiss the request if the

deﬁciency in the petition is not corrected within the

earlier of either one month from the notice of an

incomplete petition, or the expiration of the statutory

deadline in which to ﬁle a petition for post-grant

review.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.207 Preliminary response to petition.

(a) The patent owner may ﬁle a preliminary

response to the petition. The response is limited to

setting forth the reasons why no post-grant review

should be instituted under 35 U.S.C. 324 and can

include supporting evidence. The preliminary

response is subject to the word count under § 42.24.

(b) Due date. The preliminary response must

be ﬁled no later than three months after the date of

a notice indicating that the request to institute a

post-grant review has been granted a ﬁling date. A

patent owner may expedite the proceeding by ﬁling

an election to waive the patent owner preliminary

response.

(d) No amendment. The preliminary response

shall not include any amendment.

(e) Disclaim Patent Claims. The patent owner

may ﬁle a statutory disclaimer under 35 U.S.C.

253(a) in compliance with § 1.321(a), disclaiming

one or more claims in the patent. No post-grant

review will be instituted based on disclaimed claims.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

January 2018R-439

§ 42.207CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (a) revised and para. (c) removed

and reserved, 81 FR 18750, Apr. 1, 2016, effective May

2, 2016]

INSTITUTING POST-GRANT REVIEW

§ 42.208 Institution of post-grant review.

(a) When instituting post-grant review, the

Board may authorize the review to proceed on all

or some of the challenged claims and on all or some

of the grounds of unpatentability asserted for each

claim.

(b) At any time prior to institution of post-grant

review, the Board may deny some or all grounds

for unpatentability for some or all of the challenged

claims. Denial of a ground is a Board decision not

to institute post-grant review on that ground.

not be instituted for a ground of unpatentability

unless the Board decides that the petition supporting

the ground would, if unrebutted, demonstrate that

it is more likely than not that at least one of the

claims challenged in the petition is unpatentable.

The Board’s decision will take into account a patent

owner preliminary response where such a response

is ﬁled, including any testimonial evidence, but a

genuine issue of material fact created by such

testimonial evidence will be viewed in the light most

favorable to the petitioner solely for purposes of

deciding whether to institute a post-grant review. A

petitioner may seek leave to ﬁle a reply to the

preliminary response in accordance with §§ 42.23

and 42.24(c). Any such request must make a

showing of good cause.

(d) Additional grounds. Sufﬁcient grounds

under § 42.208(c) may be a showing that the petition

raises a novel or unsettled legal question that is

important to other patents or patent applications.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (c) revised, 81 FR 18750, Apr. 1,

2016, effective May 2, 2016]

AFTER INSTITUTION OF POST-GRANT

REVIEW

§ 42.220 Patent owner response.

(1) Scope. A patent owner may ﬁle a response

to the petition addressing any ground for

unpatentability not already denied. A patent owner

response is ﬁled as an opposition and is subject to

the page limits provided in § 42.24.

(b) Due date for response. If no date for ﬁling

a patent owner response to a petition is provided in

a Board order, the default date for ﬁling a patent

owner response is three months from the date the

post-grant review is instituted.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.221 Amendment of the patent.

(a) Motion to amend. A patent owner may ﬁle

one motion to amend a patent, but only after

conferring with the Board.

(1) Due date. Unless a due date is provided

in a Board order, a motion to amend must be ﬁled

no later than the ﬁling of a patent owner response.

(2) Scope. A motion to amend may be

denied where:

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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.208

(i) The amendment does not respond to

a ground of unpatentability involved in the trial; or

(ii) The amendment seeks to enlarge the

scope of the claims of the patent or introduce new

subject matter.

(3) A reasonable number of substitute

claims. A motion to amend may cancel a challenged

claim or propose a reasonable number of substitute

claims. The presumption is that only one substitute

claim would be needed to replace each challenged

claim, and it may be rebutted by a demonstration of

need.

(b) Content. A motion to amend claims must

include a claim listing, which claim listing may be

contained in an appendix to the motion, show the

changes clearly, and set forth:

(1) The support in the original disclosure of

the patent for each claim that is added or amended;

and

(2) The support in an earlier-ﬁled disclosure

for each claim for which beneﬁt of the ﬁling date

of the earlier ﬁled disclosure is sought.

the requirements set forth in paragraphs (a) and (b)

of this section, any additional motion to amend may

not be ﬁled without Board authorization. An

additional motion to amend may be authorized when

there is a good cause showing or a joint request of

the petitioner and the patent owner to materially

advance a settlement. In determining whether to

authorize such an additional motion to amend, the

Board will consider whether a petitioner has

submitted supplemental information after the time

period set for ﬁling a motion to amend in paragraph

(a)(1) of this section.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (b) introductory text revised, 80 FR

28561, May 19, 2015, effective May 19, 2015]

§ 42.222 Multiple proceedings and Joinder.

(a) Multiple proceedings. Where another matter

involving the patent is before the Ofﬁce, the Board

may during the pendency of the post-grant review

enter any appropriate order regarding the additional

matter including providing for the stay, transfer,

consolidation, or termination of any such matter.

(b) Request for joinder. Joinder may be

requested by a patent owner or petitioner. Any

request for joinder must be ﬁled, as a motion under

§ 42.22, no later than one month after the institution

date of any post-grant review for which joinder is

requested.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.223 Filing of supplemental information.

(a) Motion to submit supplemental information.

Once a trial has been instituted, a party may ﬁle a

motion to submit supplemental information in

accordance with the following requirements:

(1) A request for the authorization to ﬁle a

motion to submit supplemental information is made

within one month of the date the trial is instituted.

(2) The supplemental information must be

relevant to a claim for which the trial has been

instituted.

(b) Late submission of supplemental

information. A party seeking to submit supplemental

information more than one month after the date the

trial is instituted, must request authorization to ﬁle

a motion to submit the information. The motion to

submit supplemental information must show why

the supplemental information reasonably could not

have been obtained earlier, and that consideration

of the supplemental information would be in the

interests-of-justice.

January 2018R-441

§ 42.223CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

seeking to submit supplemental information not

relevant to a claim for which the trial has been

instituted must request authorization to ﬁle a motion

to submit the information. The motion must show

why the supplemental information reasonably could

not have been obtained earlier, and that

consideration of the supplemental information would

be in the interests-of-justice.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.224 Discovery.

Notwithstanding the discovery provisions of subpart

(a) Requests for additional discovery may be

granted upon a showing of good cause as to why

the discovery is needed; and

(b) Discovery is limited to evidence directly

related to factual assertions advanced by either party

in the proceeding.

[Applicability Note: Subpart C (Post-Grant

Review) generally applies to patents issuing from

applications subject to ﬁrst-inventor-to-ﬁle provisions

of the AIA. In addition, the Chief Administrative Patent

Judge may, in the interests-of-justice, order an

interference commenced before September 16, 2012 to

be dismissed without prejudice to the ﬁling of a petition

for post-grant review. See § 42.200(d) and the

Leahy-Smith America Invents Act, Public Law 112-29,

sec. 6(f)(3)(A).]

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

Subpart D — Transitional Program for

Covered Business Method Patents

§ 42.300 Procedure; pendency.

(a) A covered business method patent review is

a trial subject to the procedures set forth in subpart

A of this part and is also subject to the post-grant

review procedures set forth in subpart C except for

§§ 42.200, 42.201, 42.202, and 42.204.

(b) A claim in an unexpired patent that will not

expire before a ﬁnal written decision is issued shall

be given its broadest reasonable construction in light

of the speciﬁcation of the patent in which it appears.

A party may a request a district court-type claim

construction approach to be applied if a party

certiﬁes that the involved patent will expire within

18 months from the entry of the Notice of Filing

Date Accorded to Petition. The request,

accompanied by a party’s certiﬁcation, must be

made in the form of a motion under § 42.20, within

30 days from the ﬁling of the petition.

proceeding shall be administered such that pendency

before the Board after institution is normally no

more than one year. The time can be extended by

up to six months for good cause by the Chief

Administrative Patent Judge, or adjusted by the

Board in the case of joinder.

(d) The rules in this subpart are applicable until

September 15, 2020, except that the rules shall

continue to apply to any petition for a covered

business method patent review ﬁled before the date

of repeal.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (c) revised, 80 FR 28561, May 19,

2015, effective May 19, 2015; para. (b) revised, 81 FR

18750, Apr. 1, 2016, effective May 2, 2016]

§ 42.301 Deﬁnitions.

In addition to the deﬁnitions in § 42.2, the following

deﬁnitions apply to proceedings under this subpart

(a) Covered business method patent means a

patent that claims a method or corresponding

apparatus for performing data processing or other

operations used in the practice, administration, or

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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.224

management of a ﬁnancial product or service, except

that the term does not include patents for

technological inventions.

(b) Technological invention. In determining

whether a patent is for a technological invention

solely for purposes of the Transitional Program for

Covered Business Methods (section 42.301(a)), the

following will be considered on a case-by-case basis:

whether the claimed subject matter as a whole

recites a technological feature that is novel and

unobvious over the prior art; and solves a technical

problem using a technical solution.

[Added, 77 FR 48734, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.302 Who may petition for a covered

business method patent review.

(a) A petitioner may not ﬁle with the Ofﬁce a

petition to institute a covered business method patent

review of the patent unless the petitioner, the

petitioner’s real party-in-interest, or a privy of the

petitioner has been sued for infringement of the

patent or has been charged with infringement under

that patent. Charged with infringement means a real

and substantial controversy regarding infringement

of a covered business method patent exists such that

the petitioner would have standing to bring a

declaratory judgment action in Federal court.

(b) A petitioner may not ﬁle a petition to

institute a covered business method patent review

of the patent where the petitioner, the petitioner’s

real party-in-interest, or a privy of the petitioner is

estopped from challenging the claims on the grounds

identiﬁed in the petition.

institute a covered business method patent review

of the patent where, before the date on which the

petition is ﬁled, the petitioner or real

party-in-interest ﬁled a civil action challenging the

validity of a claim of the patent.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012; para. (c) added, 80 FR 28561, May 19,

2015, effective May 19, 2015]

§ 42.303 Time for ﬁling.

A petition requesting a covered business method

patent review may be ﬁled any time except during

the period in which a petition for a post-grant review

of the patent would satisfy the requirements of 35

U.S.C. 321(c).

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 42.304 Content of petition.

In addition to any other notices required by subparts

A and C of this part, a petition must request

judgment against one or more claims of a patent

identiﬁed by patent number. In addition to the

requirements of §§ 42.6, 42.8, 42.22, and 42.24 the

petition must set forth:

(a) Grounds for standing. The petitioner must

demonstrate that the patent for which review is

sought is a covered business method patent, and that

the petitioner meets the eligibility requirements of

§ 42.302.

(b) Identiﬁcation of challenge. Provide a

statement of the precise relief requested for each

claim challenged. The statement must identify the

following:

(1) The claim;

(2) The speciﬁc statutory grounds permitted

under paragraph (2) or (3) of 35 U.S.C. 282(b),

except as modiﬁed by section 18(a)(1)(C) of the

Leahy-Smith America Invents Act (Pub. L. 112–29,

125 Stat. 284 (2011)), on which the challenge to the

claim is based;

(3) How the challenged claim is to be

construed. Where the claim to be construed contains

a means-plus-function or step-plus-function

limitation as permitted under 35 U.S.C. 112(f), the

construction of the claim must identify the speciﬁc

portions of the speciﬁcation that describe the

structure, material, or acts corresponding to each

claimed function;

(4) How the construed claim is unpatentable

under the statutory grounds identiﬁed in paragraph

(b)(2) of this section. Where the grounds for

unpatentability are based on prior art, the petition

must specify where each element of the claim is

found in the prior art. For all other grounds of

unpatentability, the petition must identify the

speciﬁc part of the claim that fails to comply with

the statutory grounds raised and state how the

January 2018R-443

§ 42.304CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

identiﬁed subject matter fails to comply with the

statute; and

(5) The exhibit number of supporting

evidence relied upon to support the challenge and

the relevance of the evidence to the challenge raised,

including identifying speciﬁc portions of the

evidence that support the challenge. The Board may

exclude or give no weight to the evidence where a

party has failed to state its relevance or to identify

speciﬁc portions of the evidence that support the

challenge.

a clerical or typographical mistake in the petition.

The grant of such a motion does not change the

ﬁling date of the petition.

[Added, 77 FR 48680, Aug. 14, 2012, effective

Sept. 16, 2012]

Subpart E — Derivation

GENERAL

§ 42.400 Procedure; pendency

(a) A derivation proceeding is a trial subject to

the procedures set forth in subpart A of this part.

(b) The Board may for good cause authorize or

direct the parties to address patentability issues that

arise in the course of the derivation proceeding.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.401 Deﬁnitions.

In addition to the deﬁnitions in § 42.2, the following

deﬁnitions apply to proceedings under this subpart:

Agreement or understanding under 35 U.S.C.

135(e) means settlement for the purposes of § 42.74.

Applicant includes a reissue applicant.

Application includes both an application for

an original patent and an application for a reissued

patent.

First publication means either a patent or an

application publication under 35 U.S.C. 122(b),

including a publication of an international

application designating the United States as provided

by 35 U.S.C. 374.

Petitioner means a patent applicant who

petitions for a determination that another party

named in an earlier-ﬁled patent application allegedly

derived a claimed invention from an inventor named

in the petitioner’s application and ﬁled the earlier

application without authorization.

Respondent means a party other than the

petitioner.

Same or substantially the same means

patentably indistinct.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.402 Who may ﬁle a petition for a

derivation proceeding.

An applicant for patent may ﬁle a petition to institute

a derivation proceeding in the Ofﬁce.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.403 Time for ﬁling.

A petition for a derivation proceeding must be ﬁled

within the one-year period beginning on the date of

the ﬁrst publication of a claim to an invention that

is the same or substantially the same as the earlier

application’s claim to the allegedly derived

invention.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.404 Derivation fee.

(a) A derivation fee set forth in § 42.15(c) must

accompany the petition.

(b) No ﬁling date will be accorded to the

petition until payment is complete.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.405 Content of petition.

(a) Grounds for standing. The petition must:

(1) Demonstrate compliance with §§ 42.402

and 42.403; and

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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.400

(2) Show that the petitioner has at least one

claim that is:

(i) The same or substantially the same as

the respondent’s claimed invention; and

(ii) The same or substantially the same

as the invention disclosed to the respondent.

(b) In addition to the requirements of §§ 42.8

and 42.22, the petition must:

(1) Provide sufﬁcient information to identify

the application or patent for which the petitioner

seeks a derivation proceeding;

(2) Demonstrate that a claimed invention

was derived from an inventor named in the

petitioner’s application, and that the inventor from

whom the invention was derived did not authorize

the ﬁling of the earliest application claiming such

invention; and

(3) For each of the respondent’s claims to

the derived invention,

(i) Show why the claimed invention is

the same or substantially the same as the invention

disclosed to the respondent, and

(ii) Identify how the claim is to be

construed. Where the claim to be construed contains

a means-plus-function or step-plus-function

limitation as permitted under 35 U.S.C. 112(f), the

construction of the claim must identify the speciﬁc

portions of the speciﬁcation that describe the

structure, material, or acts corresponding to each

claimed function.

showing is not sufﬁcient unless it is supported by

substantial evidence, including at least one afﬁdavit

addressing communication of the derived invention

and lack of authorization that, if unrebutted, would

support a determination of derivation. The showing

of communication must be corroborated.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.406 Service of petition.

In addition to the requirements of § 42.6, the

petitioner must serve the petition and exhibits relied

upon in the petition as follows:

(a) The petition and supporting evidence must

be served on the respondent at the correspondence

address of record for the earlier application or

subject patent. The petitioner may additionally serve

the petition and supporting evidence on the

respondent at any other address known to the

petitioner as likely to effect service.

(b) Upon agreement of the parties, service may

be made electronically. Service may be by Priority

Mail Express® or by means at least as fast and

reliable as Priority Mail Express®. Personal service

is not required.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013; para. (b) revised, 79 FR 63036, Oct. 22,

2014, effective Oct. 22, 2014;]

§ 42.407 Filing date.

(a) Complete petition. A petition to institute a

derivation proceeding will not be accorded a ﬁling

date until the petition satisﬁes all of the following

requirements:

(1) Complies with §§ 42.404 and 42.405,

and

(2) Service of the petition on the

correspondence address of record as provided in §

42.406.

(b) Incomplete petition. Where the petitioner

ﬁles an incomplete petition, no ﬁling date will be

accorded, and the Ofﬁce will dismiss the petition if

the deﬁciency in the petition is not corrected within

the earlier of either one month from notice of the

incomplete petition, or the expiration of the statutory

deadline in which to ﬁle a petition for derivation.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

INSTITUTING DERIVATION

PROCEEDING

§ 42.408 Institution of derivation proceeding.

(a) An administrative patent judge institutes,

and may as necessary reinstitute, the derivation

proceeding on behalf of the Director.

(b) Additional derivation proceeding. The

petitioner may suggest the addition of a patent or

application to the derivation proceeding. The

January 2018R-445

§ 42.408CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

suggestion should make the showings required under

§ 42.405 and explain why the suggestion could not

have been made in the original petition.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

AFTER INSTITUTION OF DERIVATION

PROCEEDING

§ 42.409 Settlement agreements.

An agreement or understanding under 35 U.S.C.

135(e) is a settlement for the purposes of § 42.74.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.410 Arbitration.

(a) Parties may resort to binding arbitration to

determine any issue. The Ofﬁce is not a party to the

arbitration. The Board is not bound by, and may

independently determine, any question of

patentability.

(b) The Board will not set a time for, or

otherwise modify the proceeding for, an arbitration

unless:

(1) It is to be conducted according to Title

9 of the United States Code;

(2) The parties notify the Board in writing

of their intention to arbitrate;

(3) The agreement to arbitrate:

(i) Is in writing;

(ii) Speciﬁes the issues to be arbitrated;

(iii) Names the arbitrator, or provides a

date not more than 30 days after the execution of

the agreement for the selection of the arbitrator;

(iv) Provides that the arbitrator’s award

shall be binding on the parties and that judgment

thereon can be entered by the Board;

(v) Provides that a copy of the agreement

is ﬁled within 20 days after its execution; and

(vi) Provides that the arbitration is

completed within the time the Board sets.

selection of the arbitrator and the conduct of the

arbitration.

(d) The Board may determine issues the

arbitration does not resolve.

(e) The Board will not consider the arbitration

award unless it:

(1) Is binding on the parties;

(2) Is in writing;

(3) States in a clear and deﬁnite manner each

issue arbitrated and the disposition of each issue;

and

(4) Is ﬁled within 20 days of the date of the

award.

(f) Once the award is ﬁled, the parties to the

award may not take actions inconsistent with the

award. If the award is dispositive of the contested

subject matter for a party, the Board may enter

judgment as to that party.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.411 Common interests in the invention.

The Board may decline to institute, or if already

instituted the Board may issue judgment in, a

derivation proceeding between an application and

a patent or another application that are commonly

owned.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

§ 42.412 Public availability of Board records.

(a) Publication.

(1) Generally. Any Board decision is

available for public inspection without a party’s

permission if rendered in a ﬁle open to the public

pursuant to § 1.11 of this chapter or in an application

that has been published in accordance with §§ 1.211

to 1.221 of this chapter. The Ofﬁce may

independently publish any Board decision that is

available for public inspection.

(2) Determination of special circumstances.

Any Board decision not publishable under paragraph

(a)(1) of this section may be published or made

available for public inspection if the Director

believes that special circumstances warrant

publication and a party does not petition within two

months after being notiﬁed of the intention to make

R-446January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 42.409

the decision public, objecting in writing on the

ground that the decision discloses the objecting

party’s trade secret or other conﬁdential information

and stating with speciﬁcity that such information is

not otherwise publicly available.

(b) Record of proceeding.

(1) The record of a Board proceeding is

available to the public, unless a patent application

not otherwise available to the public is involved.

(2) Notwithstanding paragraph (b)(1) of this

section, after a ﬁnal Board decision in or judgment

in a Board proceeding, the record of the Board

proceeding will be made available to the public if

any involved ﬁle is or becomes open to the public

under § 1.11 of this chapter or an involved

application is or becomes published under §§ 1.211

to 1.221 of this chapter.

[Added 77 FR 56068, Sept. 11, 2012, effective

Mar. 16, 2013]

PART 90 — JUDICIAL REVIEW OF PATENT

TRIAL AND APPEAL BOARD DECISIONS

Sec.

90.1 Scope.

90.2 Notice; service.

90.3 Time for appeal or civil action.

§ 90.1 Scope.

The provisions herein govern judicial review for

Patent Trial and Appeal Board decisions under

chapter 13 of title 35, United States Code. Judicial

review of decisions arising out of inter partes

reexamination proceedings that are requested under

35 U.S.C. 311, and where available, judicial review

of decisions arising out of interferences declared

pursuant to 35 U.S.C. 135 continue to be governed

by the pertinent regulations in effect on July 1, 2012.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 90.2 Notice; service.

(a) For an appeal under 35 U.S.C. 141.

(1) In all appeals, the notice of appeal

required by 35 U.S.C. 142 must be ﬁled with the

Director of the United States Patent and Trademark

Ofﬁce as provided in § 104.2 of this title. A copy

of the notice of appeal must also be ﬁled with the

Patent Trial and Appeal Board in the appropriate

manner provided in § 41.10(a), 41.10(b), or 42.6(b).

(2) In all appeals, the party initiating the

appeal must comply with the requirements of the

Federal Rules of Appellate Procedure and Rules for

the United States Court of Appeals for the Federal

Circuit, including:

(i) Serving the requisite number of copies

on the Court; and

(ii) Paying the requisite fee for the

appeal.

(3) Additional requirements.

(i) In appeals arising out of an ex parte

reexamination proceeding ordered pursuant to §

1.525, notice of the appeal must be served as

provided in § 1.550(f) of this title.

(ii) In appeals arising out of an inter

partes review, a post-grant review, a covered

business method patent review, or a derivation

proceeding, notice of the appeal must provide

sufﬁcient information to allow the Director to

determine whether to exercise the right to intervene

in the appeal pursuant to 35 U.S.C. 143, and it must

be served as provided in § 42.6(e) of this title.

(b) For a notice of election under 35 U.S.C.

141(d) to proceed under 35 U.S.C. 146.

(1) Pursuant to 35 U.S.C. 141(d), if an

adverse party elects to have all further review

proceedings conducted under 35 U.S.C. 146 instead

of under 35 U.S.C. 141, that party must ﬁle a notice

of election with the United States Patent and

Trademark Ofﬁce as provided in § 104.2.

(2) A copy of the notice of election must

also be ﬁled with the Patent Trial and Appeal Board

in the manner provided in § 42.6(b).

(3) A copy of the notice of election must

also be served where necessary pursuant to §

42.6(e).

party initiating an action under 35 U.S.C. 146 must

ﬁle a copy of the complaint no later than ﬁve

business days after ﬁling the complaint in district

court with the Patent Trial and Appeal Board in the

manner provided in § 42.6(b), and the Ofﬁce of the

Solicitor pursuant to § 104.2. Failure to comply with

this requirement can result in further action within

January 2018R-447

§ 90.2CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

the United States Patent and Trademark Ofﬁce

consistent with the ﬁnal Board decision.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

§ 90.3 Time for appeal or civil action.

(a) Filing deadline.

(1) For an appeal under 35 U.S.C. 141. The

notice of appeal ﬁled pursuant to 35 U.S.C. 142

must be ﬁled with the Director of the United States

Patent and Trademark Ofﬁce no later than

sixty-three (63) days after the date of the ﬁnal Board

decision. Any notice of cross-appeal is controlled

by Rule 4(a)(3) of the Federal Rules of Appellate

Procedure, and any other requirement imposed by

the Rules of the United States Court of Appeals for

the Federal Circuit.

(2) For a notice of election under 35 U.S.C.

141(d). The time for ﬁling a notice of election under

35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).

(3) For a civil action under 35 U.S.C. 145

or 146.

(i) A civil action must be commenced no

later than sixty-three (63) days after the date of the

ﬁnal Board decision.

(ii) The time for commencing a civil

action pursuant to a notice of election under 35

U.S.C. 141(d) is governed by 35 U.S.C. 141(d).

(b) Time computation.

(1) Rehearing. A timely request for

rehearing will reset the time for appeal or civil action

to no later than sixty-three (63) days after action on

the request. Any subsequent request for rehearing

from the same party in the same proceeding will not

reset the time for seeking judicial review, unless the

additional request is permitted by order of the Board.

(2) Holidays. If the last day for ﬁling an

appeal or civil action falls on a Federal holiday in

the District of Columbia, the time is extended

pursuant to 35 U.S.C. 21(b).

(1) The Director, or his designee, may extend

the time for ﬁling an appeal, or commencing a civil

action, upon written request if:

(i) Requested before the expiration of the

period for ﬁling an appeal or commencing a civil

action, and upon a showing of good cause; or

(ii) Requested after the expiration of the

period for ﬁling an appeal of commencing a civil

action, and upon a showing that the failure to act

was the result of excusable neglect.

(2) The request must be ﬁled as provided in

§ 104.2 of this title.

[Added, 77 FR 48612, Aug. 14, 2012, effective

Sept. 16, 2012]

SUBCHAPTER B — ADMINISTRATION

PART 102 — DISCLOSURE OF GOVERNMENT

INFORMATION

Freedom of Information Act

Sec.

102.1 General.

102.2 Public reference facilities.

102.3 Records under FOIA.

102.4 Requirements for making requests.

102.5 Responsibility for responding to requests.

102.6 Time limits and expedited processing.

102.7 Responses to requests.

102.9 Business Information.

102.10 Appeals from initial determinations or

untimely delays.

102.11 Fees.

Privacy Act

102.21 Purpose and scope.

102.22 Deﬁnitions.

102.23 Procedures for making inquiries.

102.24 Procedures for making requests for records.

102.25 Disclosure of requested records to

individuals.

102.26 Special procedures: Medical records.

102.27 Procedures for making requests for

correction or amendment.

102.28 Review of requests for correction or

amendment.

102.29 Appeal of initial adverse determination on

correction or amendment.

102.30 Disclosure of record to person other than

the individual to whom it pertains.

102.31 Fees.

102.32 Penalties.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 90.3

102.33 General exemptions.

102.34 Speciﬁc exemptions.

Subpart A — Freedom of Information Act

§ 102.1 General.

(a) The information in this part is furnished for

the guidance of the public and in compliance with

the requirements of the Freedom of Information Act

(FOIA), as amended (5 U.S.C. 552). This part sets

forth the procedures the United States Patent and

Trademark Ofﬁce (USPTO) follows to make

publicly available the materials and indices speciﬁed

in 5 U.S.C. 552(a)(2) and records requested under

5 U.S.C. 552(a)(3). Information routinely provided

to the public as part of a regular USPTO activity

(for example, press releases issued by the Ofﬁce of

Public Affairs) may be provided to the public

without following this part. USPTO’s policy is to

make discretionary disclosures of records or

information exempt from disclosure under FOIA

whenever disclosure would not foreseeably harm

an interest protected by a FOIA exemption, but this

policy does not create any right enforceable in court.

(b) As used in this subpart, FOIA Ofﬁcer means

the USPTO employee designated to administer

FOIA for USPTO. To ensure prompt processing of

a request, correspondence should be addressed to

the FOIA Ofﬁcer, United States Patent and

Trademark Ofﬁce, P.O. Box 1450, Alexandria,

Virginia 22313-1450, or delivered by hand to

10B20, Madison Building East, 600 Dulany Street,

Alexandria, Virginia.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000; para. (b) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003; para. (b) revised, 70 FR

10488, Mar. 4, 2005, effective Mar. 4, 2005]

§ 102.2 Public reference facilities.

(a) USPTO maintains a public reference facility

that contains the records FOIA requires to be made

regularly available for public inspection and

copying; furnishes information and otherwise assists

the public concerning USPTO operations under

FOIA; and receives and processes requests for

records under FOIA. The FOIA Ofﬁcer is

responsible for determining which of USPTO’s

records are required to be made available for public

inspection and copying, and for making those

records available in USPTO’s reference and records

inspection facility. The FOIA Ofﬁcer shall maintain

and make available for public inspection and

copying a current subject-matter index of USPTO’s

public inspection facility records. Each index shall

be updated regularly, at least quarterly, with respect

to newly included records. In accordance with 5

U.S.C. 552(a)(2), USPTO has determined that it is

unnecessary and impracticable to publish quarterly,

or more frequently, and distribute copies of the index

and supplements thereto. The public reference

facility is located in the Public Search Room,

Madison Building East, First Floor, 600 Dulany

Street, Alexandria, Virginia.

(b) The FOIA Ofﬁcer shall also make public

inspection facility records created by USPTO on or

after November 1, 1996, available electronically

through USPTO’s World Wide Web site

(http://www.uspto.gov). Information available at

the site shall include:

(1) The FOIA Ofﬁcer’s index of the public

inspection facility records, which indicates which

records are available electronically; and

(2) The general index referred to in

paragraph (c)(3) of this section.

public inspection and copying:

(1) A current index providing identifying

information for the public as to any matter that is

issued, adopted, or promulgated after July 4, 1967,

and that is retained as a record and is required to be

made available or published. Copies of the index

are available upon request after payment of the

direct cost of duplication;

(2) Copies of records that have been released

and that the FOIA Ofﬁcer determines, because of

their subject matter, have become or are likely to

become the subject of subsequent requests for

substantially the same records;

(3) A general index of the records described

in paragraph (c)(2) of this section;

(4) Final opinions and orders, including

concurring and dissenting opinions made in the

adjudication of cases;

(5) Those statements of policy and

interpretations that have been adopted by USPTO

and are not published in the Federal Register ; and

January 2018R-449

§ 102.2CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(6) Administrative staff manuals and

instructions to staff that affect a member of the

public.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000; para. (a) revised, 75 FR 36294, June 25,

2010, effective June 25, 2010]

§ 102.3 Records under FOIA.

(a) Records under FOIA include all Government

records, regardless of format, medium or physical

characteristics, and include electronic records and

information, audiotapes, videotapes, and

photographs.

(b) There is no obligation to create, compile, or

obtain from outside USPTO a record to satisfy a

FOIA request. With regard to electronic data, the

issue of whether records are created or merely

extracted from an existing database is not always

apparent. When responding to FOIA requests for

electronic data where creation of a record or

programming becomes an issue, USPTO shall

undertake reasonable efforts to search for the

information in electronic format.

and provide new information pursuant to user fee

statutes, such as the ﬁrst paragraph of 15 U.S.C.

1525, or in accordance with authority otherwise

provided by law. This is outside the scope of FOIA.

(d) The FOIA Ofﬁcer shall preserve all

correspondence pertaining to the requests received

under this subpart, as well as copies of all requested

records, until disposition or destruction is authorized

by Title 44 of the United States Code or a National

Archives and Records Administration’s General

Records Schedule. The FOIA Ofﬁcer shall not

dispose of records while they are the subject of a

pending request, appeal, or lawsuit under FOIA.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.4 Requirements for making requests.

(a) A request for USPTO records that are not

customarily made available to the public as part of

USPTO’s regular informational services must be in

writing, and shall be processed under FOIA,

regardless of whether FOIA is mentioned in the

request. Requests should be sent to the USPTO

FOIA Ofﬁcer, United States Patent and Trademark

Ofﬁce, P.O. Box 1450, Alexandria, Virginia

22313-1450 (records FOIA requires to be made

regularly available for public inspection and copying

are addressed in § 102.2(c)). For the quickest

handling, the request letter and envelope should be

marked “Freedom of Information Act Request.” For

requests for records about oneself, § 102.24 contains

additional requirements. For requests for records

about another individual, either a written

authorization signed by that individual permitting

disclosure of those records to the requester or proof

that individual is deceased (for example, a copy of

a death certiﬁcate or an obituary) facilitates

processing the request.

(b) The records requested must be described in

enough detail to enable USPTO personnel to locate

them with a reasonable amount of effort. Whenever

possible, a request should include speciﬁc

information about each record sought, such as the

date, title or name, author, recipient, and subject

matter of the record, and the name and location of

the ofﬁce where the record is located. Also, if

records about a court case are sought, the title of the

case, the court in which the case was ﬁled, and the

nature of the case should be included. If known, any

ﬁle designations or descriptions for the requested

records should be included. In general, the more

speciﬁcally the request describes the records sought,

the greater the likelihood that USPTO will locate

those records. If the FOIA Ofﬁcer determines that

a request does not reasonably describe records, the

FOIA Ofﬁcer will inform the requester what

additional information is needed or why the request

is otherwise insufﬁcient. The FOIA Ofﬁcer also

may give the requester an opportunity to discuss the

request so that it may be modiﬁed to meet the

requirements of this section.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000; para. (a) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003]

§ 102.5 Responsibility for responding to

requests.

(a) In general. Except as stated in paragraph

(b) of this section, the USPTO will process FOIA

requests directed to USPTO. In determining records

responsive to a request, the FOIA Ofﬁcer shall

include only those records within USPTO’s

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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.3

possession and control as of the date the FOIA

Ofﬁcer receives the request.

(b) Consultations and referrals. If the FOIA

Ofﬁcer receives a request for a record in USPTO’s

possession in which another Federal agency subject

to FOIA has the primary interest, the FOIA Ofﬁcer

shall refer the record to that agency for direct

response to the requester. The FOIA Ofﬁcer shall

consult with another Federal agency before

responding to a requester if the FOIA Ofﬁcer

receives a request for a record in which another

Federal agency subject to FOIA has a signiﬁcant

interest, but not the primary interest; or another

Federal agency not subject to FOIA has the primary

interest or a signiﬁcant interest. Ordinarily, the

agency that originated a record will be presumed to

have the primary interest in it.

Ofﬁcer refers a document to another Federal agency

for direct response to the requester, the FOIA Ofﬁcer

will ordinarily notify the requester in writing of the

referral and inform the requester of the name of the

agency to which the document was referred.

(d) Timing of responses to consultations and

referrals. All consultations and referrals shall be

handled according to the date the FOIA request was

received by the ﬁrst Federal agency.

(e) Agreements regarding consultations and

referrals. The FOIA Ofﬁcer may make agreements

with other Federal agencies to eliminate the need

for consultations or referrals for particular types of

records.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.6 Time limits and expedited

processing.

(a) In general. The FOIA Ofﬁcer ordinarily

shall respond to requests according to their order of

receipt.

(b) Initial response and appeal. Subject to

paragraph (c)(1) of this section, an initial response

shall be made within 20 working days (i.e.,

excluding Saturdays, Sundays, and legal public

holidays) of the receipt of a request for a record

under this part by the proper FOIA Ofﬁcer identiﬁed

in accordance with § 102.5(a), and an appeal shall

be decided within 20 working days of its receipt by

the Ofﬁce of the General Counsel.

(1) In unusual circumstances as speciﬁed in

paragraph (c)(2) of this section, the FOIA Ofﬁcer

may extend the time limits in paragraph (b) of this

section by notifying the requester in writing as soon

as practicable of the unusual circumstances and of

the date by which processing of the request is

expected to be completed. Extensions of time for

the initial determination and extensions on appeal

may not exceed a total of ten working days, unless

the requester agrees to a longer extension, or the

FOIA Ofﬁcer provides the requester with an

opportunity either to limit the scope of the request

so that it may be processed within the applicable

time limit, or to arrange an alternative time frame

for processing the request or a modiﬁed request.

(2) As used in this section, unusual

circumstances, means, but only to the extent

reasonably necessary to properly process the

particular request:

(i) The need to search for and collect the

requested records from ﬁeld facilities or other

establishments separate from the ofﬁce processing

the request;

(ii) The need to search for, collect, and

appropriately examine a voluminous amount of

separate and distinct records that are the subject of

a single request; or

(iii) The need for consultation, which

shall be conducted with all practicable speed, with

another Federal agency having a substantial interest

in the determination of the request.

(3) Unusual circumstances do not include a

delay that results from a predictable workload of

requests, unless USPTO demonstrates reasonable

progress in reducing its backlog of pending requests.

Refusal to reasonably modify the scope of a request

or arrange an alternate time frame may affect a

requester’s ability to obtain judicial review.

(4) If the FOIA Ofﬁcer reasonably believes

that multiple requests submitted by a requester, or

by a group of requesters acting in concert, constitute

a single request that would otherwise involve

unusual circumstances, and the requests involve

clearly related matters, the FOIA Ofﬁcer may

January 2018R-451

§ 102.6CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

aggregate them. Multiple requests involving

unrelated matters will not be aggregated.

(d) Multitrack processing.

(1) The FOIA Ofﬁcer may use two or more

processing tracks by distinguishing between simple

and more complex requests based on the number of

pages involved, or some other measure of the

amount of work and/or time needed to process the

request, and whether the request qualiﬁes for

expedited processing as described in paragraph (e)

of this section.

(2) The FOIA Ofﬁcer may provide

requesters in a slower track with an opportunity to

limit the scope of their requests in order to qualify

for faster processing. The FOIA Ofﬁcer may contact

the requester by telephone or by letter, whichever

is most efﬁcient in each case.

(e) Expedited processing.

(1) Requests and appeals shall be taken out

of order and given expedited treatment whenever it

is determined they involve:

(i) Circumstances in which the lack of

expedited treatment could reasonably be expected

to pose an imminent threat to the life or physical

safety of an individual;

(ii) The loss of substantial due process

rights;

(iii) A matter of widespread and

exceptional media interest in which there exist

questions about the Government’s integrity that

affect public conﬁdence; or

(iv) An urgency to inform the public

about an actual or alleged Federal Government

activity, if made by a person primarily engaged in

disseminating information.

(2) A request for expedited processing may

be made at the time of the initial request for records

or at any later time. For a prompt determination, a

request for expedited processing should be sent to

the FOIA Ofﬁcer.

(3) A requester who seeks expedited

processing must submit a statement, certiﬁed to be

true and correct to the best of that person’s

knowledge and belief, explaining in detail the basis

for requesting expedited processing. For example,

a requester within the category described in

paragraph (e)(1)(iv) of this section, if not a full-time

member of the news media, must establish that he

or she is a person whose main professional activity

or occupation is information dissemination, though

it need not be his or her sole occupation. A requester

within the category described in paragraph (e)(1)(iv)

of this section must also establish a particular

urgency to inform the public about the Government

activity involved in the request, beyond the public’s

right to know about Government activity generally.

The formality of certiﬁcation may be waived as a

matter of administrative discretion.

(4) Within ten calendar days of receipt of a

request for expedited processing, the FOIA Ofﬁcer

will decide whether to grant it and shall notify the

requester of the decision. If a request for expedited

treatment is granted, the request shall be given

priority and processed as soon as practicable. If a

request for expedited processing is denied, any

appeal of that decision shall be acted on

expeditiously.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.7 Responses to requests.

(a) Grants of requests. If the FOIA Ofﬁcer

makes a determination to grant a request in whole

or in part, the FOIA Ofﬁcer will notify the requester

in writing. The FOIA Ofﬁcer will inform the

requester in the notice of any fee charged under §

102.11 and disclose records to the requester

promptly upon payment of any applicable fee.

Records disclosed in part shall be marked or

annotated to show each applicable FOIA exemption

and the amount of information deleted, unless doing

so would harm an interest protected by an applicable

exemption. The location of the information deleted

shall also be indicated on the record, if feasible.

(b) Adverse determinations of requests. If the

FOIA Ofﬁcer makes an adverse determination

regarding a request, the FOIA Ofﬁcer will notify

the requester of that determination in writing. An

adverse determination is a denial of a request in any

respect, namely: A determination to withhold any

requested record in whole or in part; a determination

that a requested record does not exist or cannot be

located; a determination that a record is not readily

reproducible in the form or format sought by the

requester; a determination that what has been

requested is not a record subject to FOIA (except

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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.7

that a determination under § 102.11(j) that records

are to be made available under a fee statute other

than FOIA is not an adverse determination); a

determination against the requester on any disputed

fee matter, including a denial of a request for a fee

waiver; or a denial of a request for expedited

treatment. Each denial letter shall be signed by the

FOIA Ofﬁcer and shall include:

(1) The name and title or position of the

denying ofﬁcial;

(2) A brief statement of the reason(s) for the

denial, including applicable FOIA exemption(s);

(3) An estimate of the volume of records or

information withheld, in number of pages or some

other reasonable form of estimation. This estimate

need not be provided if the volume is otherwise

indicated through deletions on records disclosed in

part, or if providing an estimate would harm an

interest protected by an applicable FOIA exemption;

and

(4) A statement that the denial may be

appealed, and a list of the requirements for ﬁling an

appeal under § 102.10(b).

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.9 Business Information.

(a) In general. Business information obtained

by USPTO from a submitter will be disclosed under

FOIA only under this section.

(b) Deﬁnitions. For the purposes of this section:

(1) Business information means commercial

or ﬁnancial information, obtained by USPTO from

a submitter, which may be protected from disclosure

under FOIA exemption 4 (5 U.S.C. 552(b)(4)).

(2) Submitter means any person or entity

outside the Federal Government from whom USPTO

obtains business information, directly or indirectly.

The term includes corporations; state, local and

tribal governments; and foreign governments.

submitter of business information should designate

by appropriate markings, either at the time of

submission or at a reasonable time thereafter, any

portions of its submission that it considers to be

protected from disclosure under FOIA exemption

4. These designations will expire ten years after the

date of the submission unless the submitter requests,

and provides justiﬁcation for, a longer designation

period.

(d) Notice to submitters. The FOIA Ofﬁcer

shall provide a submitter with prompt written notice

of a FOIA request or administrative appeal that

seeks its business information whenever required

under paragraph (e) of this section, except as

provided in paragraph (h) of this section, in order

to give the submitter an opportunity under paragraph

(f) of this section to object to disclosure of any

speciﬁed portion of that information. Such written

notice shall be sent via certiﬁed mail, return receipt

requested, or similar means. The notice shall either

describe the business information requested or

include copies of the requested records containing

the information. When notiﬁcation of a large number

of submitters is required, notiﬁcation may be made

by posting or publishing the notice in a place

reasonably likely to accomplish notiﬁcation.

(e) When notice is required. Notice shall be

given to the submitter whenever:

(1) The information has been designated in

good faith by the submitter as protected from

disclosure under FOIA exemption 4; or

(2) The FOIA Ofﬁcer has reason to believe

that the information may be protected from

disclosure under FOIA exemption 4.

(f) Opportunity to object to disclosure. The

FOIA Ofﬁcer shall allow a submitter seven working

days (i.e., excluding Saturdays, Sundays, and legal

public holidays) from the date of receipt of the

written notice described in paragraph (d) of this

section to provide the FOIA Ofﬁcer with a detailed

statement of any objection to disclosure. The

statement must specify all grounds for withholding

any portion of the information under any exemption

of FOIA and, in the case of exemption 4, it must

show why the information is a trade secret or

commercial or ﬁnancial information that is

privileged or conﬁdential. If a submitter fails to

respond to the notice within the time speciﬁed, the

submitter will be considered to have no objection

to disclosure of the information. Information a

submitter provides under this paragraph may itself

be subject to disclosure under FOIA.

(g) Notice of intent to disclose. The FOIA

Ofﬁcer shall consider a submitter’s objections and

speciﬁc grounds under FOIA for nondisclosure in

January 2018R-453

§ 102.9CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

deciding whether to disclose business information.

If the FOIA Ofﬁcer decides to disclose business

information over the objection of a submitter, the

FOIA Ofﬁcer shall give the submitter written notice

via certiﬁed mail, return receipt requested, or similar

means, which shall include:

(1) A statement of reason(s) why the

submitter’s objections to disclosure were not

sustained;

(2) A description of the business information

to be disclosed; and

(3) A statement that the FOIA Ofﬁcer

intends to disclose the information seven working

days from the date the submitter receives the notice.

(h) Exceptions to notice requirements. The

notice requirements of paragraphs (d) and (g) of this

section shall not apply if:

(1) The FOIA Ofﬁcer determines that the

information should not be disclosed;

(2) The information has been lawfully

published or has been ofﬁcially made available to

the public;

(3) Disclosure of the information is required

by statute (other than FOIA) or by a regulation

issued in accordance with Executive Order 12600;

(4) The designation made by the submitter

under paragraph (c) of this section appears obviously

frivolous, in which case the FOIA Ofﬁcer shall

provide the submitter written notice of any ﬁnal

decision to disclose the information seven working

days from the date the submitter receives the notice.

(i) Notice of FOIA lawsuit. Whenever a

requester ﬁles a lawsuit seeking to compel the

disclosure of business information, the FOIA Ofﬁcer

shall promptly notify the submitter.

(j) Corresponding notice to requesters.

Whenever a FOIA Ofﬁcer provides a submitter with

notice and an opportunity to object to disclosure

under paragraph (d) of this section, the FOIA Ofﬁcer

shall also notify the requester(s). Whenever a

submitter ﬁles a lawsuit seeking to prevent the

disclosure of business information, the FOIA Ofﬁcer

shall notify the requester(s).

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.10 Appeals from initial determinations

or untimely delays.

(a) If a request for records is initially denied in

whole or in part, or has not been timely determined,

or if a requester receives an adverse initial

determination regarding any other matter under this

subpart (as described in § 102.7(b)), the requester

may ﬁle a written appeal, which must be received

by the Ofﬁce of General Counsel within thirty

calendar days of the date of the written denial or, if

there has been no determination, may be submitted

anytime after the due date, including the last

extension under § 102.6(c), of the determination.

(b) Appeals shall be decided by a Deputy

General Counsel. Appeals should be addressed to

the General Counsel, United States Patent and

Trademark Ofﬁce, PO Box 1450, Alexandria,

Virginia 22313-1450. Both the letter and the appeal

envelope should be clearly marked “Freedom of

Information Appeal”. The appeal must include a

copy of the original request and the initial denial, if

any, and may include a statement of the reasons why

the records requested should be made available and

why the initial denial, if any, was in error. No

opportunity for personal appearance, oral argument

or hearing on appeal is provided.

the appeal shall be immediately notiﬁed and copies

of the releasable documents shall be made available

promptly thereafter upon receipt of appropriate fees

determined in accordance with § 102.11.

(d) If no determination of an appeal has been

sent to the requester within the twenty-working-day

period speciﬁed in § 102.6(b) or the last extension

thereof, the requester is deemed to have exhausted

his administrative remedies with respect to the

request, giving rise to a right of judicial review

under 5 U.S.C. 552(a)(6)(C). If the person making

a request initiates a civil action against USPTO

based on the provision in this paragraph, the

administrative appeal process may continue.

(e) A determination on appeal shall be in writing

and, when it denies records in whole or in part, the

letter to the requester shall include:

(1) A brief explanation of the basis for the

denial, including a list of applicable FOIA

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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.10

exemptions and a description of how the exemptions

apply;

(2) A statement that the decision is ﬁnal;

(3) Notiﬁcation that judicial review of the

denial is available in the United States district court

for the district in which the requester resides or has

its principal place of business, the United States

District Court for the Eastern District of Virginia,

or the District of Columbia; and

(4) The name and title or position of the

ofﬁcial responsible for denying the appeal.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000; para. (b) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003]

§ 102.11 Fees.

(a) In general. USPTO shall charge for

processing requests under FOIA in accordance with

paragraph (c) of this section, except when fees are

limited under paragraph (d) of this section or when

a waiver or reduction of fees is granted under

paragraph (k) of this section. USPTO shall collect

all applicable fees before sending copies of

requested records to a requester. Requesters must

pay fees by check or money order made payable to

the Treasury of the United States.

(b) Deﬁnitions. For purposes of this section:

(1) Commercial use request means a request

from or on behalf of a person who seeks information

for a use or purpose that furthers his or her

commercial, trade, or proﬁt interests, which can

include furthering those interests through litigation.

The FOIA Ofﬁcer shall determine, whenever

reasonably possible, the use to which a requester

will put the requested records. When it appears that

the requester will put the records to a commercial

use, either because of the nature of the request itself

or because the FOIA Ofﬁcer has reasonable cause

to doubt a requester’s stated use, the FOIA Ofﬁcer

shall provide the requester a reasonable opportunity

to submit further clariﬁcation.

(2) Direct costs means those expenses

USPTO incurs in searching for and duplicating (and,

in the case of commercial use requests, reviewing)

records to respond to a FOIA request. Direct costs

include, for example, the labor costs of the employee

performing the work (the basic rate of pay for the

employee, plus 16 percent of that rate to cover

beneﬁts). Not included in direct costs are overhead

expenses such as the costs of space and heating or

lighting of the facility in which the records are kept.

(3) Duplication means the making of a copy

of a record, or of the information contained in it,

necessary to respond to a FOIA request. Copies may

take the form of paper, microform, audiovisual

materials, or electronic records (for example,

magnetic tape or disk), among others. The FOIA

Ofﬁcer shall honor a requester’s speciﬁed preference

of form or format of disclosure if the record is

readily reproducible with reasonable efforts in the

requested form or format.

(4) Educational institution means a

preschool, a public or private elementary or

secondary school, an institution of undergraduate

higher education, an institution of graduate higher

education, an institution of professional education,

or an institution of vocational education, that

operates a program of scholarly research. To be in

this category, a requester must show that the request

is authorized by and is made under the auspices of

a qualifying institution, and that the records are

sought to further scholarly research rather than for

a commercial use.

(5) Noncommercial scientiﬁc institution

means an institution that is not operated on a

“commercial” basis, as that term is deﬁned in

paragraph (b)(1) of this section, and that is operated

solely for the purpose of conducting scientiﬁc

research, the results of which are not intended to

promote any particular product or industry. To be

in this category, a requester must show that the

request is authorized by and is made under the

auspices of a qualifying institution and that the

records are sought to further scientiﬁc research

rather than for a commercial use.

(6) Representative of the news media, or

news media requester means any person actively

gathering news for an entity that is organized and

operated to publish or broadcast news to the public.

The term “news” means information that is about

current events or that would be of current interest

to the public. Examples of news media entities

include television or radio stations broadcasting to

the public at large and publishers of periodicals (but

only if they can qualify as disseminators of “news”)

that make their products available for purchase or

subscription by the general public. For “freelance”

January 2018R-455

§ 102.11CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

journalists to be regarded as working for a news

organization, they must demonstrate a solid basis

for expecting publication through that organization.

A publication contract would be the clearest proof,

but the FOIA Ofﬁcer shall also look to the past

publication record of a requester in making this

determination. To be in this category, a requester

must not be seeking the requested records for a

commercial use. However, a request for records

supporting the news-dissemination function of the

requester shall not be considered to be for a

commercial use.

(7) Review means the examination of a

record located in response to a request in order to

determine whether any portion of it is exempt from

disclosure. It also includes processing any record

for disclosure—for example, doing all that is

necessary to redact it and prepare it for disclosure.

Review costs are recoverable even if a record

ultimately is not disclosed. Review time does not

include time spent resolving general legal or policy

issues regarding the application of exemptions.

(8) Search means the process of looking for

and retrieving records or information responsive to

a request. It includes page-by-page or line-by-line

identiﬁcation of information within records and also

includes reasonable efforts to locate and retrieve

information from records maintained in electronic

form or format. The FOIA Ofﬁcer shall ensure that

searches are done in the most efﬁcient and least

expensive manner reasonably possible.

FOIA Ofﬁcer shall charge the fees summarized in

chart form in paragraphs (c)(1) and (c)(2) of this

section and explained in paragraphs (c)(3) through

(c)(5) of this section, unless a waiver or reduction

of fees has been granted under paragraph (k) of this

section.

(1) The four categories and chargeable fees

are:

Chargeable feesCategory

Search, Review, and

Duplication.

(i) Commercial Use

Requesters

Duplication (excluding

the cost of the ﬁrst 100

pages).

(ii) Educational and

Non-commercial Scientiﬁc

Institution Requesters

Chargeable feesCategory

Duplication (excluding

the cost of the ﬁrst 100

pages).

(iii) Representatives of the

News Media

Search and Duplication

(excluding the cost of the

(iv) All Other Requesters

ﬁrst 2 hours of search and

100 pages).

(2) Uniform fee schedule.

RateService

Actual salary rate of

employee involved, plus

16 percent of salary rate.

(i) Manual search

Actual direct cost,

including operator time.

(ii) Computerized search

$.15 per page Actual

direct cost, including

operator time

(iii) Duplication of

records: (A) Paper copy

reproduction (B) Other

reproduction (e.g.,

computer disk or printout,

microﬁlm, microﬁche, or

microform)

Actual salary rate of

employee conducting

(iv) Review of records

(includes preparation for

release, i.e. excising) review, plus 16 percent of

salary rate.

(3) Search.

(i) Search fees shall be charged for all

requests—other than requests made by educational

institutions, noncommercial scientiﬁc institutions,

or representatives of the news media—subject to

the limitations of paragraph (d) of this section. The

FOIA Ofﬁcer will charge for time spent searching

even if no responsive records are located or if

located records are entirely exempt from disclosure.

Search fees shall be the direct costs of conducting

the search by the involved employees

(ii) For computer searches of records,

requesters will be charged the direct costs of

conducting the search, although certain requesters

(as provided in paragraph (d)(1) of this section) will

be charged no search fee and certain other requesters

(as provided in paragraph (d)(3) of this section) are

entitled to the cost equivalent of two hours of

manual search time without charge. These direct

costs include the costs, attributable to the search, of

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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.11

operating a central processing unit and

operator/programmer salary.

(4) Duplication. Duplication fees will be

charged to all requesters, subject to the limitations

of paragraph (d) of this section. For a paper

photocopy of a record (no more than one copy of

which need be supplied), the fee shall be $.15 cents

per page. For copies produced by computer, such

as tapes or printouts, the FOIA Ofﬁcer shall charge

the direct costs, including operator time, of

producing the copy. For other forms of duplication,

the FOIA Ofﬁcer will charge the direct costs of that

duplication.

(5) Review. Review fees shall be charged

to requesters who make a commercial use request.

Review fees shall be charged only for the initial

record review—the review done when the FOIA

Ofﬁcer determines whether an exemption applies

to a particular record at the initial request level. No

charge will be made for review at the administrative

appeal level for an exemption already applied.

However, records withheld under an exemption that

is subsequently determined not to apply may be

reviewed again to determine whether any other

exemption not previously considered applies, and

the costs of that review are chargeable. Review fees

shall be the direct costs of conducting the review

by the involved employees.

(d) Limitations on charging fees.

(1) No search fee will be charged for

requests by educational institutions, noncommercial

scientiﬁc institutions, or representatives of the news

media.

(2) No search fee or review fee will be

charged for a quarter-hour period unless more than

half of that period is required for search or review.

(3) Except for requesters seeking records for

a commercial use, the FOIA Ofﬁcer will provide

without charge:

(i) The ﬁrst 100 pages of duplication (or

the cost equivalent); and

(ii) The ﬁrst two hours of search (or the

cost equivalent).

(4) Whenever a total fee calculated under

paragraph (c) of this section is $20.00 or less for

any request, no fee will be charged.

(5) The provisions of paragraphs (d) (3) and

(4) of this section work together. This means that

for requesters other than those seeking records for

a commercial use, no fee will be charged unless the

cost of the search in excess of two hours plus the

cost of duplication in excess of 100 pages totals

more than $20.00.

(e) Notice of anticipated fees over $20.00.

When the FOIA Ofﬁcer determines or estimates that

the fees to be charged under this section will be

more than $20.00, the FOIA Ofﬁcer shall notify the

requester of the actual or estimated fees, unless the

requester has indicated a willingness to pay fees as

high as those anticipated. If only a portion of the

fee can be estimated readily, the FOIA Ofﬁcer shall

advise the requester that the estimated fee may be

only a portion of the total fee. If the FOIA Ofﬁcer

has notiﬁed a requester that actual or estimated fees

are more than $20.00, the FOIA Ofﬁcer shall not

consider the request received or process it further

until the requester agrees to pay the anticipated total

fee. Any such agreement should be in writing. A

notice under this paragraph shall offer the requester

an opportunity to discuss the matter with USPTO

personnel in order to reformulate the request to meet

the requester’s needs at a lower cost.

(f) Charges for other services. Apart from the

other provisions of this section, the FOIA Ofﬁcer

shall ordinarily charge the direct cost of special

services. Such special services could include

certifying that records are true copies or sending

records by other than ordinary mail.

(g) Charging interest. The FOIA Ofﬁcer shall

charge interest on any unpaid bill starting on the

31st calendar day following the date of billing the

requester. Interest charges shall be assessed at the

rate provided in 31 U.S.C. 3717 and accrue from

the date of the billing until payment is received by

the FOIA Ofﬁcer. The FOIA Ofﬁcer shall follow

the provisions of the Debt Collection Improvement

Act of 1996 (Pub. L. 104-134), as amended, and its

administrative procedures, including the use of

consumer reporting agencies, collection agencies,

and offset.

(h) Aggregating requests. If a FOIA Ofﬁcer

reasonably believes that a requester or a group of

requesters acting together is attempting to divide a

request into a series of requests for the purpose of

avoiding fees, the FOIA Ofﬁcer may aggregate those

January 2018R-457

§ 102.11CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

requests and charge accordingly. The FOIA Ofﬁcer

may presume that multiple requests of this type

made within a 30-calendar-day period have been

made in order to avoid fees. If requests are separated

by a longer period, the FOIA Ofﬁcer shall aggregate

them only if a solid basis exists for determining that

aggregation is warranted under all the circumstances

involved. Multiple requests involving unrelated

matters shall not be aggregated.

(i) Advance payments.

(1) For requests other than those described

in paragraphs (i)(2) and (3) of this section, the FOIA

Ofﬁcer shall not require the requester to make an

advance payment: a payment made before work is

begun or continued on a request. Payment owed for

work already completed (i.e., a payment before

copies are sent to a requester) is not an advance

payment.

(2) If the FOIA Ofﬁcer determines or

estimates that a total fee to be charged under this

section will be more than $250.00, the requester

must pay the entire anticipated fee before beginning

to process the request, unless the FOIA Ofﬁcer

receives a satisfactory assurance of full payment

from a requester who has a history of prompt

payment.

(3) If a requester has previously failed to pay

a properly charged FOIA fee to USPTO or another

responsible Federal agency within 30 calendar days

of the date of billing, the FOIA Ofﬁcer shall require

the requester to pay the full amount due, plus any

applicable interest, and to make an advance payment

of the full amount of any anticipated fee, before the

FOIA Ofﬁcer begins to process a new request or

continues to process a pending request from that

requester.

(4) In cases in which the FOIA Ofﬁcer

requires payment under paragraphs (i)(2) or (3) of

this section, the request shall not be considered

received and further work will not be done on it

until the required payment is received.

(5) Upon the completion of processing of a

request, when a speciﬁc fee is determined to be

payable and appropriate notice has been given to

the requester, the FOIA Ofﬁcer shall make records

available to the requester only upon receipt of full

payment of the fee.

(j) Other statutes speciﬁcally providing for fees.

The fee schedule of this section does not apply to

fees charged under any statute (except for FOIA)

that speciﬁcally requires USPTO or another

responsible Federal agency to set and collect fees

for particular types of records. If records responsive

to requests are maintained for distribution by

agencies operating such statutorily based fee

schedule programs, the FOIA Ofﬁcer shall inform

requesters of how to obtain records from those

sources.

(k) Requirements for waiver or reduction of

fees.

(1) Records responsive to a request will be

furnished without charge or at a charge reduced

below that established under paragraph (c) of this

section if the FOIA Ofﬁcer determines, based on

all available information, that the requester has

demonstrated that:

(i) Disclosure of the requested

information is in the public interest because it is

likely to contribute signiﬁcantly to public

understanding of the operations or activities of the

Government; and

(ii) Disclosure of the information is not

primarily in the commercial interest of the requester.

(2) To determine whether the ﬁrst fee waiver

requirement is met, the FOIA Ofﬁcer shall consider

the following factors:

(i) The subject of the request: whether

the subject of the requested records concerns the

operations or activities of the Government. The

subject of the requested records must concern

identiﬁable operations or activities of the Federal

Government, with a connection that is direct and

clear, not remote or attenuated.

(ii) The informative value of the

information to be disclosed: whether the disclosure

is “likely to contribute” to an understanding of

Government operations or activities. The disclosable

portions of the requested records must be

meaningfully informative about Government

operations or activities in order to be “likely to

contribute” to an increased public understanding of

those operations or activities. The disclosure of

information that already is in the public domain, in

either a duplicative or a substantially identical form,

R-458January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 102.11

would not be likely to contribute to such

understanding.

(iii) The contribution to an

understanding of the subject by the public likely to

result from disclosure: whether disclosure of the

requested information will contribute to the

understanding of a reasonably broad audience of

persons interested in the subject, as opposed to the

individual understanding of the requester. A

requester’s expertise in the subject area and ability

and intention to effectively convey information to

the public shall be considered. It shall be presumed

that a representative of the news media satisﬁes this

consideration. It shall be presumed that a requester

who merely provides information to media sources

does not satisfy this consideration.

(iv) The signiﬁcance of the contribution

to public understanding: whether the disclosure is

likely to contribute “signiﬁcantly” to public

understanding of Government operations or

activities. The public’s understanding of the subject

in question prior to the disclosure must be

signiﬁcantly enhanced by the disclosure.

(3) To determine whether the second fee

waiver requirement is met, the FOIA Ofﬁcer shall

consider the following factors:

(i) The existence and magnitude of a

commercial interest: whether the requester has a

commercial interest that would be furthered by the

requested disclosure. The FOIA Ofﬁcer shall

consider any commercial interest of the requester

(with reference to the deﬁnition of “commercial use

request” in paragraph (b)(1) of this section), or of

any person on whose behalf the requester may be

acting, that would be furthered by the requested

disclosure. Requesters shall be given an opportunity

to provide explanatory information regarding this

consideration.

(ii) The primary interest in disclosure:

whether any identiﬁed commercial interest of the

requester is sufﬁciently large, in comparison with

the public interest in disclosure, that disclosure is

“primarily in the commercial interest of the

requester.” A fee waiver or reduction is justiﬁed if

the public interest standard (paragraph (k)(1)(i) of

this section) is satisﬁed and the public interest is

greater than any identiﬁed commercial interest in

disclosure. The FOIA Ofﬁcer ordinarily shall

presume that if a news media requester has satisﬁed

the public interest standard, the public interest is the

primary interest served by disclosure to that

requester. Disclosure to data brokers or others who

merely compile and market Government information

for direct economic return shall not be presumed to

primarily serve the public interest.

(4) If only some of the records to be released

satisfy the requirements for a fee waiver, a waiver

shall be granted for those records.

(5) Requests for the waiver or reduction of

fees should address the factors listed in paragraphs

(k)(2) and (3) of this section, insofar as they apply

to each request.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

Subpart B — Privacy Act

§ 102.21 Purpose and scope.

(a) The purpose of this subpart is to establish

policies and procedures for implementing the

Privacy Act of 1974, as amended (5 U.S.C. 552a)

(the Act). The main objectives are to facilitate full

exercise of rights conferred on individuals under

the Act and to ensure the protection of privacy as

to individuals on whom USPTO maintains records

in systems of records under the Act. USPTO accepts

the responsibility to act promptly and in accordance

with the Act upon receipt of any inquiry, request or

appeal from a citizen of the United States or an alien

lawfully admitted for permanent residence into the

United States, regardless of the age of the individual.

Further, USPTO accepts the obligations to maintain

only such information on individuals as is relevant

and necessary to the performance of its lawful

functions, to maintain that information with such

accuracy, relevancy, timeliness, and completeness

as is reasonably necessary to assure fairness in

determinations made by USPTO about the

individual, to obtain information from the individual

to the extent practicable, and to take every

reasonable step to protect that information from

unwarranted disclosure. USPTO will maintain no

record describing how an individual exercises rights

guaranteed by the First Amendment unless expressly

authorized by statute or by the individual about

whom the record is maintained or unless pertinent

to and within the scope of an authorized law

enforcement activity. An individual’s name and

January 2018R-459

§ 102.21CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

address will not be sold or rented by USPTO unless

such action is speciﬁcally authorized by law;

however, this provision shall not be construed to

require the withholding of names and addresses

otherwise permitted to be made public.

(b) This subpart is administered by the Privacy

Ofﬁcer of USPTO.

include the following:

(1) Requests for records which do not pertain

to the individual making the request, or to the

individual about whom the request is made if the

requester is the parent or guardian of the individual;

(2) Requests involving information

pertaining to an individual which is in a record or

ﬁle but not within the scope of a system of records

notice published in the Federal Register;

(3) Requests to correct a record where a

grievance procedure is available to the individual

either by regulation or by provision in a collective

bargaining agreement with USPTO, and the

individual has initiated, or has expressed in writing

the intention of initiating, such grievance procedure.

An individual selecting the grievance procedure

waives the use of the procedures in this subpart to

correct or amend a record; and,

(4) Requests for employee-employer services

and counseling which were routinely granted prior

to enactment of the Act, including, but not limited

to, test calculations of retirement beneﬁts,

explanations of health and life insurance programs,

and explanations of tax withholding options.

(d) Any request for records which pertains to

the individual making the request, or to the

individual about whom the request is made if the

requester is the parent or guardian of the individual,

shall be processed under the Act and this subpart

and under the Freedom of Information Act and

USPTO’s implementing regulations at Subpart A

of this part, regardless whether the Act or the

Freedom of Information Act is mentioned in the

request.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.22 Deﬁnitions.

(a) All terms used in this subpart which are

deﬁned in 5 U.S.C. 552a shall have the same

meaning herein.

(b) As used in this subpart:

(1) Act means the “Privacy Act of 1974, as

amended (5 U.S.C. 552a)”.

(2) Appeal means a request by an individual

to review and reverse an initial denial of a request

by that individual for correction or amendment.

(3) USPTO means the United States Patent

and Trademark Ofﬁce.

(4) Inquiry means either a request for

general information regarding the Act and this

subpart or a request by an individual (or that

individual’s parent or guardian) that USPTO

determine whether it has any record in a system of

records which pertains to that individual.

(5) Person means any human being and also

shall include but not be limited to, corporations,

associations, partnerships, trustees, receivers,

personal representatives, and public or private

organizations.

(6) Privacy Ofﬁcer means a USPTO

employee designated to administer this subpart.

(7) Request for access means a request by

an individual or an individual’s parent or guardian

to see a record which is in a particular system of

records and which pertains to that individual.

(8) Request for correction or amendment

means the request by an individual or an individual’s

parent or guardian that USPTO change (either by

correction, amendment, addition or deletion) a

particular record in a system of records which

pertains to that individual.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.23 Procedures for making inquiries.

(a) Any individual, regardless of age, who is a

citizen of the United States or an alien lawfully

admitted for permanent residence into the United

States may submit an inquiry to USPTO. The

inquiry should be made either in person at 10B20,

Madison Building East, 600 Dulany Street,

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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.22

Alexandria, Virginia, or by mail addressed to the

Privacy Ofﬁcer, United States Patent and Trademark

Ofﬁce, P.O. Box 1450, Alexandria, Virginia

22313-1450, or to the ofﬁcial identiﬁed in the

notiﬁcation procedures paragraph of the systems of

records notice published in the Federal Register.

If an individual believes USPTO maintains a record

pertaining to that individual but does not know

which system of records might contain such a

record, the USPTO Privacy Ofﬁcer will provide

assistance in person or by mail.

(b) Inquiries submitted by mail should include

the words “PRIVACY ACT INQUIRY” in capital

letters at the top of the letter and on the face of the

envelope. If the inquiry is for general information

regarding the Act and this subpart, no particular

information is required. USPTO reserves the right

to require compliance with the identiﬁcation

procedures appearing at § 102.24(d) where

circumstances warrant. If the inquiry is a request

that USPTO determine whether it has, in a given

system of records, a record which pertains to the

individual, the following information should be

submitted:

(1) Name of individual whose record is

sought;

(2) Individual whose record is sought is

either a U.S. citizen or an alien lawfully admitted

for permanent residence;

(3) Identifying data that will help locate the

record (for example, maiden name, occupational

license number, period or place of employment,

etc.);

(4) Record sought, by description and by

record system name, if known;

(5) Action requested (that is, sending

information on how to exercise rights under the Act;

determining whether requested record exists; gaining

access to requested record; or obtaining copy of

requested record);

(6) Copy of court guardianship order or

minor’s birth certiﬁcate, as provided in §

102.24(f)(3), but only if requester is guardian or

parent of individual whose record is sought;

(7) Requester’s name (printed), signature,

address, and telephone number (optional);

(8) Date; and,

(9) Certiﬁcation of request by notary or other

ofﬁcial, but only if

(i) Request is for notiﬁcation that

requested record exists, for access to requested

record or for copy of requested record;

(ii) Record is not available to any person

under 5 U.S.C. 552; and

(iii) Requester does not appear before an

employee of USPTO for veriﬁcation of identity.

speciﬁed in paragraph (a) of this section or which

is not marked as speciﬁed in paragraph (b) of this

section will be so addressed and marked by USPTO

personnel and forwarded immediately to the Privacy

Ofﬁcer. An inquiry which is not properly addressed

by the individual will not be deemed to have been

“received” for purposes of measuring the time period

for response until actual receipt by the Privacy

Ofﬁcer. In each instance when an inquiry so

forwarded is received, the Privacy Ofﬁcer shall

notify the individual that his or her inquiry was

improperly addressed and the date the inquiry was

received at the proper address.

(d)(1) Each inquiry received shall be acted

upon promptly by the Privacy Ofﬁcer. Every effort

will be made to respond within ten working days

(i.e., excluding Saturdays, Sundays and legal public

holidays) of the date of receipt. If a response cannot

be made within ten working days, the Privacy

Ofﬁcer shall send an acknowledgment during that

period providing information on the status of the

inquiry and asking for such further information as

may be necessary to process the inquiry. The ﬁrst

correspondence sent by the Privacy Ofﬁcer to the

requester shall contain USPTO’s control number

assigned to the request, as well as a note that the

requester should use that number in all future

contacts in order to facilitate processing. USPTO

shall use that control number in all subsequent

correspondence.

(2) If the Privacy Ofﬁcer fails to send an

acknowledgment within ten working days, as

provided above, the requester may ask the General

Counsel to take corrective action. No failure of the

Privacy Ofﬁcer to send an acknowledgment shall

confer administrative ﬁnality for purposes of judicial

review.

January 2018R-461

§ 102.23CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(e) An individual shall not be required to state

a reason or otherwise justify his or her inquiry.

(f) Special note should be taken of the fact that

certain agencies are responsible for publishing

notices of systems of records having

Government-wide application to other agencies,

including USPTO. The agencies known to be

publishing these general notices and the types of

records covered therein appear in an appendix to

this part. The provisions of this section, and

particularly paragraph (a) of this section, should be

followed in making inquiries with respect to such

records. Such records in USPTO are subject to the

provisions of this part to the extent indicated in the

appendix to this part. The exemptions, if any,

determined by an agency publishing a general notice

shall be invoked and applied by USPTO after

consultation, as necessary, with that other agency.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000; para. (a) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003; para. (a) revised, 70 FR

10488, Mar. 4, 2005, effective Mar. 4, 2005]

§ 102.24 Procedures for making requests for

records.

(a) Any individual, regardless of age, who is a

citizen of the United States or an alien lawfully

admitted for permanent residence into the United

States may submit a request for access to records to

USPTO. The request should be made either in

person at 10B20, Madison Building East, 600

Dulany Street, Alexandria, Virginia, or by mail

addressed to the Privacy Ofﬁcer, United States

Patent and Trademark Ofﬁce, P.O. Box 1450,

Alexandria, Virginia 22313-1450.

(b) Requests submitted by mail should include

the words “PRIVACY ACT REQUEST” in capital

letters at the top of the letter and on the face of the

envelope. Any request which is not addressed as

speciﬁed in paragraph (a) of this section or which

is not marked as speciﬁed in this paragraph will be

so addressed and marked by USPTO personnel and

forwarded immediately to the Privacy Ofﬁcer. A

request which is not properly addressed by the

individual will not be deemed to have been

“received” for purposes of measuring time periods

for response until actual receipt by the Privacy

Ofﬁcer. In each instance when a request so

forwarded is received, the Privacy Ofﬁcer shall

notify the individual that his or her request was

improperly addressed and the date when the request

was received at the proper address.

102.23 in connection with which the individual’s

identity was established by USPTO, the individual

need only indicate the record to which access is

sought, provide the USPTO control number assigned

to the request, and sign and date the request. If the

request is not preceded by an inquiry under § 102.23,

the procedures of this section should be followed.

(d) The requirements for identiﬁcation of

individuals seeking access to records are as follows:

(1) In person. Each individual making a

request in person shall be required to present

satisfactory proof of identity. The means of proof,

in the order of preference and priority, are:

(i) A document bearing the individual’s

photograph (for example, driver’s license, passport

or military or civilian identiﬁcation card);

(ii) A document, preferably issued for

participation in a federally sponsored program,

bearing the individual’s signature (for example,

unemployment insurance book, employer’s

identiﬁcation card, national credit card, and

professional, craft or union membership card); and

(iii) A document bearing neither the

photograph nor the signature of the individual,

preferably issued for participation in a federally

sponsored program (for example, Medicaid card).

In the event the individual can provide no suitable

documentation of identity, USPTO will require a

signed statement asserting the individual’s identity

and stipulating that the individual understands the

penalty provision of 5 U.S.C. 552a(i)(3) recited in

§ 102.32(a). In order to avoid any unwarranted

disclosure of an individual’s records, USPTO

reserves the right to determine the adequacy of proof

of identity offered by any individual, particularly

when the request involves a sensitive record.

(2) Not in person. If the individual making

a request does not appear in person before the

Privacy Ofﬁcer or other employee authorized to

determine identity, a certiﬁcation of a notary public

or equivalent ofﬁcer empowered to administer oaths

must accompany the request under the circumstances

prescribed in § 102.23(b)(9). The certiﬁcation in or

R-462January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 102.24

attached to the letter must be substantially in

accordance with the following text:

City of _________________

County of ____________________:ss

(Name of individual), who afﬁxed (his) (her) signature below

in my presence, came before me, a (title), in and for the

aforesaid County and State, this _______ day of

_________________, 20__, and established (his) (her) identity

to my satisfaction.

My commission expires _________________.

(Signature)

(3) Parents of minors and legal guardians.

An individual acting as the parent of a minor or the

legal guardian of the individual to whom a record

pertains shall establish his or her personal identity

in the same manner prescribed in either paragraph

(d)(1) or (d)(2) of this section. In addition, such

other individual shall establish his or her identity in

the representative capacity of parent or legal

guardian. In the case of the parent of a minor, the

proof of identity shall be a certiﬁed or authenticated

copy of the minor’s birth certiﬁcate. In the case of

a legal guardian of an individual who has been

declared incompetent due to physical or mental

incapacity or age by a court of competent

jurisdiction, the proof of identity shall be a certiﬁed

or authenticated copy of the court’s order. For

purposes of the Act, a parent or legal guardian may

represent only a living individual, not a decedent.

A parent or legal guardian may be accompanied

during personal access to a record by another

individual, provided the provisions of § 102.25(f)

are satisﬁed.

(e) When the provisions of this subpart are

alleged to impede an individual in exercising his or

her right to access, USPTO will consider, from an

individual making a request, alternative suggestions

regarding proof of identity and access to records.

(f) An individual shall not be required to state

a reason or otherwise justify his or her request for

access to a record.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000; para. (a) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003; para. (a) revised, 70 FR

10488, Mar. 4, 2005, effective Mar. 4, 2005]

§ 102.25 Disclosure of requested records to

individuals.

(a)(1) The Privacy Ofﬁcer shall act promptly

upon each request. Every effort will be made to

respond within ten working days (i.e., excluding

Saturdays, Sundays, and legal public holidays) of

the date of receipt. If a response cannot be made

within ten working days due to unusual

circumstances, the Privacy Ofﬁcer shall send an

acknowledgment during that period providing

information on the status of the request and asking

for any further information that may be necessary

to process the request. “Unusual circumstances”

shall include circumstances in which

(i) A search for and collection of

requested records from inactive storage, ﬁeld

facilities or other establishments is required;

(ii) A voluminous amount of data is

involved;

(iii) Information on other individuals

must be separated or expunged from the particular

record; or

(iv) Consultations with other agencies

having a substantial interest in the determination of

the request are necessary.

(2) If the Privacy Ofﬁcer fails to send an

acknowledgment within ten working days, as

provided above in paragraph (a) of this section, the

requester may ask the General Counsel to take

corrective action. No failure of the Privacy Ofﬁcer

to send an acknowledgment shall confer

administrative ﬁnality for purposes of judicial

review.

(b) Grant of access—

(1) Notiﬁcation. An individual shall be

granted access to a record pertaining to him or her,

except where the provisions of paragraph (g)(1) of

this section apply. The Privacy Ofﬁcer will notify

the individual of a determination to grant access,

and provide the following information:

(i) The methods of access, as set forth in

paragraph (b)(2) of this section;

(ii) The place at which the record may

be inspected;

(iii) The earliest date on which the record

may be inspected and the period of time that the

January 2018R-463

§ 102.25CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

records will remain available for inspection. In no

event shall the earliest date be later than thirty

calendar days from the date of notiﬁcation;

(iv) The estimated date by which a copy

of the record could be mailed and the estimate of

fees pursuant to § 102.31. In no event shall the

estimated date be later than thirty calendar days

from the date of notiﬁcation;

(v) The fact that the individual, if he or

she wishes, may be accompanied by another

individual during personal access, subject to the

procedures set forth in paragraph (f) of this section;

and,

(vi) Any additional requirements needed

to grant access to a speciﬁc record.

(2) Methods of access. The following

methods of access to records by an individual may

be available depending on the circumstances of a

given situation:

(i) Inspection in person may be had in a

location speciﬁed by the Privacy Ofﬁcer during

business hours;

(ii) Transfer of records to a Federal

facility more convenient to the individual may be

arranged, but only if the Privacy Ofﬁcer determines

that a suitable facility is available, that the

individual’s access can be properly supervised at

that facility, and that transmittal of the records to

that facility will not unduly interfere with operations

of USPTO or involve unreasonable costs, in terms

of both money and manpower; and

(iii) Copies may be mailed at the request

of the individual, subject to payment of the fees

prescribed in § 102.31. USPTO, on its own

initiative, may elect to provide a copy by mail, in

which case no fee will be charged the individual.

the provisions of § 102.26.

(d) USPTO will supply such other information

and assistance at the time of access as to make the

record intelligible to the individual.

(e) USPTO reserves the right to limit access to

copies and abstracts of original records, rather than

the original records. This election would be

appropriate, for example, when the record is in an

automated data media such as tape or diskette, when

the record contains information on other individuals,

and when deletion of information is permissible

under exemptions (for example, 5 U.S.C.

552a(k)(2)). In no event shall original records of

USPTO be made available to the individual except

under the immediate supervision of the Privacy

Ofﬁcer or the Privacy Ofﬁcer’s designee.

(f) Any individual who requests access to a

record pertaining to that individual may be

accompanied by another individual of his or her

choice. “Accompanied” includes discussion of the

record in the presence of the other individual. The

individual to whom the record pertains shall

authorize the presence of the other individual in

writing. The authorization shall include the name

of the other individual, a speciﬁc description of the

record to which access is sought, the USPTO control

number assigned to the request, the date, and the

signature of the individual to whom the record

pertains. The other individual shall sign the

authorization in the presence of the Privacy Ofﬁcer.

An individual shall not be required to state a reason

or otherwise justify his or her decision to be

accompanied by another individual during personal

access to a record.

(g) Initial denial of access—

(1) Grounds. Access by an individual to a

record which pertains to that individual will be

denied only upon a determination by the Privacy

Ofﬁcer that:

(i) The record is exempt under § 102.33

or § 102.34, or exempt by determination of another

agency publishing notice of the system of records,

as described in § 102.23(f);

(ii) The record is information compiled

in reasonable anticipation of a civil action or

proceeding;

(iii) The provisions of § 102.26

pertaining to medical records temporarily have been

invoked; or

(iv) The individual has unreasonably

failed to comply with the procedural requirements

of this part.

(2) Notiﬁcation. The Privacy Ofﬁcer shall

give notice of denial of access to records to the

individual in writing and shall include the following

information:

(i) The Privacy Ofﬁcer’s name and title

or position;

R-464January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 102.25

(ii) The date of the denial;

(iii) The reasons for the denial, including

citation to the appropriate section of the Act and

this part;

(iv) The individual’s opportunities, if

any, for further administrative consideration,

including the identity and address of the responsible

ofﬁcial. If no further administrative consideration

within USPTO is available, the notice shall state

that the denial is administratively ﬁnal; and

(v) If stated to be administratively ﬁnal

within USPTO, the individual’s right to judicial

review provided under 5 U.S.C. 552a(g)(1), as

limited by 5 U.S.C. 552a(g)(5).

(3) Administrative review. When an initial

denial of a request is issued by the Privacy Ofﬁcer,

the individual’s opportunities for further

consideration shall be as follows:

(i) As to denial under paragraph (g)(1)(i)

of this section, two opportunities for further

consideration are available in the alternative:

(A) If the individual contests the

application of the exemption to the records, review

procedures in § 102.25(g)(3)(ii) shall apply; or

(B) If the individual challenges the

exemption itself, the procedure is a petition for the

issuance, amendment, or repeal of a rule under 5

U.S.C. 553(e). If the exemption was determined by

USPTO, such petition shall be ﬁled with the General

Counsel. If the exemption was determined by

another agency (as described in § 102.23(f)),

USPTO will provide the individual with the name

and address of the other agency and any relief sought

by the individual shall be that provided by the

regulations of the other agency. Within USPTO, no

such denial is administratively ﬁnal until such a

petition has been ﬁled by the individual and

disposed of on the merits by the General Counsel.

(ii) As to denial under paragraphs

(g)(1)(ii) of this section, (g)(1)(iv) of this section or

(to the limited extent provided in paragraph

(g)(3)(i)(A) of this section) paragraph (g)(1)(i) of

this section, the individual may ﬁle for review with

the General Counsel, as indicated in the Privacy

Ofﬁcer’s initial denial notiﬁcation. The procedures

appearing in § 102.28 shall be followed by both the

individual and USPTO to the maximum extent

practicable.

(iii) As to denial under paragraph

(g)(1)(iii) of this section, no further administrative

consideration within USPTO is available because

the denial is not administratively ﬁnal until

expiration of the time period indicated in §

102.26(a).

(h) If a request is partially granted and partially

denied, the Privacy Ofﬁcer shall follow the

appropriate procedures of this section as to the

records within the grant and the records within the

denial.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.26 Special procedures: Medical

records.

(a) No response to any request for access to

medical records by an individual will be issued by

the Privacy Ofﬁcer for a period of seven working

days (i.e., excluding Saturdays, Sundays, and legal

public holidays) from the date of receipt.

(b) USPTO has published as a routine use, for

all systems of records containing medical records,

consultations with an individual’s physician or

psychologist if, in the sole judgment of USPTO,

disclosure could have an adverse effect upon the

individual. The mandatory waiting period set forth

in paragraph (a) of this section will permit exercise

of this routine use in appropriate cases. USPTO will

pay no cost of any such consultation.

for access to medical records, the Privacy Ofﬁcer

shall:

(1) Inform the individual of the waiting

period prescribed in paragraph (a) of this section;

(2) Obtain the name and address of the

individual’s physician and/or psychologist, if the

individual consents to give them;

(3) Obtain speciﬁc, written consent for

USPTO to consult the individual’s physician and/or

psychologist in the event that USPTO believes such

consultation is advisable, if the individual consents

to give such authorization;

(4) Obtain speciﬁc, written consent for

USPTO to provide the medical records to the

individual’s physician or psychologist in the event

that USPTO believes access to the record by the

January 2018R-465

§ 102.26CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

individual is best effected under the guidance of the

individual’s physician or psychologist, if the

individual consents to give such authorization; and

(5) Forward the individual’s medical record

to USPTO’s medical expert for review and a

determination on whether consultation with or

transmittal of the medical records to the individual’s

physician or psychologist is warranted. If the

consultation with or transmittal of such records to

the individual’s physician or psychologist is

determined to be warranted, USPTO’s medical

expert shall so consult or transmit. Whether or not

such a consultation or transmittal occurs, USPTO’s

medical ofﬁcer shall provide instruction to the

Privacy Ofﬁcer regarding the conditions of access

by the individual to his or her medical records.

(d) If an individual refuses in writing to give

the names and consents set forth in paragraphs (c)(2)

through (c)(4) of this section and USPTO has

determined that disclosure could have an adverse

effect upon the individual, USPTO shall give the

individual access to said records by means of a copy,

provided without cost to the requester, sent

registered mail return receipt requested.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.27 Procedures for making requests for

correction or amendment.

(a) Any individual, regardless of age, who is a

citizen of the United States or an alien lawfully

admitted for permanent residence into the United

States may submit a request for correction or

amendment to USPTO. The request should be made

either in person or by mail addressed to the Privacy

Ofﬁcer who processed the individual’s request for

access to the record, and to whom is delegated

authority to make initial determinations on requests

for correction or amendment. The ofﬁce of the

Privacy Ofﬁcer is open to the public between the

hours of 9 a.m. and 4 p.m., Monday through Friday

(excluding legal public holidays).

(b) Requests submitted by mail should include

the words “PRIVACY ACT REQUEST” in capital

letters at the top of the letter and on the face of the

envelope. Any request which is not addressed as

speciﬁed in paragraph (a) of this section or which

is not marked as speciﬁed in this paragraph will be

so addressed and marked by USPTO personnel and

forwarded immediately to the Privacy Ofﬁcer. A

request which is not properly addressed by the

individual will not be deemed to have been

“received” for purposes of measuring the time period

for response until actual receipt by the Privacy

Ofﬁcer. In each instance when a request so

forwarded is received, the Privacy Ofﬁcer shall

notify the individual that his or her request was

improperly addressed and the date the request was

received at the proper address.

request for access under § 102.25, the individual’s

identity will be established by his or her signature

on the request and use of the USPTO control number

assigned to the request.

(d) A request for correction or amendment

should include the following:

(1) Speciﬁc identiﬁcation of the record

sought to be corrected or amended (for example,

description, title, date, paragraph, sentence, line and

words);

(2) The speciﬁc wording to be deleted, if

any;

(3) The speciﬁc wording to be inserted or

added, if any, and the exact place at which to be

inserted or added; and

(4) A statement of the basis for the requested

correction or amendment, with all available

supporting documents and materials which

substantiate the statement. The statement should

identify the criterion of the Act being invoked, that

is, whether the information in the record is

unnecessary, inaccurate, irrelevant, untimely or

incomplete.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.28 Review of requests for correction

or amendment.

(a)

(1)

(i) Not later than ten working days (i.e.,

excluding Saturdays, Sundays and legal public

holidays) after receipt of a request to correct or

amend a record, the Privacy Ofﬁcer shall send an

acknowledgment providing an estimate of time

within which action will be taken on the request and

R-466January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 102.27

asking for such further information as may be

necessary to process the request. The estimate of

time may take into account unusual circumstances

as described in § 102.25(a). No acknowledgment

will be sent if the request can be reviewed,

processed, and the individual notiﬁed of the results

of review (either compliance or denial) within the

ten working days. Requests ﬁled in person will be

acknowledged in writing at the time submitted.

(ii) If the Privacy Ofﬁcer fails to send

the acknowledgment within ten working days, as

provided in paragraph (a)(1)(i) of this section, the

requester may ask the General Counsel to take

corrective action. No failure of the Privacy Ofﬁcer

to send an acknowledgment shall confer

administrative ﬁnality for purposes of judicial

review.

(2) Promptly after acknowledging receipt of

a request, or after receiving such further information

as might have been requested, or after arriving at a

decision within the ten working days, the Privacy

Ofﬁcer shall either:

(i) Make the requested correction or

amendment and advise the individual in writing of

such action, providing either a copy of the corrected

or amended record or a statement as to the means

whereby the correction or amendment was effected

in cases where a copy cannot be provided (for

example, erasure of information from a record

maintained only in magnetically recorded computer

ﬁles); or

(ii) Inform the individual in writing that

his or her request is denied and provide the

following information:

(A) The Privacy Ofﬁcer’s name and

title or position;

(B) The date of the denial;

including citation to the appropriate sections of the

Act and this subpart; and

(D) The procedures for appeal of the

denial as set forth in § 102.29, including the address

of the General Counsel.

(3) The term promptly in this section means

within thirty working days (i.e., excluding

Saturdays, Sundays, and legal public holidays). If

the Privacy Ofﬁcer cannot make the determination

within thirty working days, the individual will be

advised in writing of the reason therefor and of the

estimated date by which the determination will be

made.

(b) Whenever an individual’s record is corrected

or amended pursuant to a request by that individual,

the Privacy Ofﬁcer shall be responsible for notifying

all persons and agencies to which the corrected or

amended portion of the record had been disclosed

prior to its correction or amendment, if an

accounting of such disclosure required by the Act

was made. The notiﬁcation shall require a recipient

agency maintaining the record to acknowledge

receipt of the notiﬁcation, to correct or amend the

record, and to apprise any agency or person to which

it had disclosed the record of the substance of the

correction or amendment.

the Privacy Ofﬁcer in reviewing a request for

correction or amendment:

(1) The sufﬁciency of the evidence

submitted by the individual;

(2) The factual accuracy of the information;

(3) The relevance and necessity of the

information in terms of purpose for which it was

collected;

(4) The timeliness and currency of the

information in light of the purpose for which it was

collected;

(5) The completeness of the information in

terms of the purpose for which it was collected;

(6) The degree of risk that denial of the

request could unfairly result in determinations

adverse to the individual;

(7) The character of the record sought to be

corrected or amended; and

(8) The propriety and feasibility of

complying with the speciﬁc means of correction or

amendment requested by the individual.

(d) USPTO will not undertake to gather

evidence for the individual, but does reserve the

right to verify the evidence which the individual

submits.

(e) Correction or amendment of a record

requested by an individual will be denied only upon

a determination by the Privacy Ofﬁcer that:

January 2018R-467

§ 102.28CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) The individual has failed to establish, by

a preponderance of the evidence, the propriety of

the correction or amendment in light of the criteria

set forth in paragraph (c) of this section;

(2) The record sought to be corrected or

amended is part of the ofﬁcial record in a terminated

judicial, quasi-judicial, or quasi-legislative

proceeding to which the individual was a party or

participant;

(3) The information in the record sought to

be corrected or amended, or the record sought to be

corrected or amended, is the subject of a pending

judicial, quasi-judicial, or quasi-legislative

proceeding to which the individual is a party or

participant;

(4) The correction or amendment would

violate a duly enacted statute or promulgated

regulation; or

(5) The individual has unreasonably failed

to comply with the procedural requirements of this

part.

(f) If a request is partially granted and partially

denied, the Privacy Ofﬁcer shall follow the

appropriate procedures of this section as to the

records within the grant and the records within the

denial.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.29 Appeal of initial adverse

determination on correction or amendment.

(a) When a request for correction or amendment

has been denied initially under § 102.28, the

individual may submit a written appeal within thirty

working days (i.e., excluding Saturdays, Sundays

and legal public holidays) after the date of the initial

denial. When an appeal is submitted by mail, the

postmark is conclusive as to timeliness.

(b) An appeal should be addressed to the

General Counsel, United States Patent and

Trademark Ofﬁce, PO Box 1450, Alexandria,

Virginia 22313-1450. An appeal should include the

words “PRIVACY APPEAL” in capital letters at

the top of the letter and on the face of the envelope.

An appeal not addressed and marked as provided

herein will be so marked by USPTO personnel when

it is so identiﬁed and will be forwarded immediately

to the General Counsel. An appeal which is not

properly addressed by the individual will not be

deemed to have been “received” for purposes of

measuring the time periods in this section until

actual receipt by the General Counsel. In each

instance when an appeal so forwarded is received,

the General Counsel shall notify the individual that

his or her appeal was improperly addressed and the

date when the appeal was received at the proper

address.

statement of the reasons why the initial denial is

believed to be in error and USPTO’s control number

assigned to the request. The appeal shall be signed

by the individual. The record which the individual

requests be corrected or amended and all

correspondence between the Privacy Ofﬁcer and

the requester will be furnished by the Privacy

Ofﬁcer who issued the initial denial. Although the

foregoing normally will comprise the entire record

on appeal, the General Counsel may seek additional

information necessary to assure that the ﬁnal

determination is fair and equitable and, in such

instances, disclose the additional information to the

individual to the greatest extent possible, and

provide an opportunity for comment thereon.

(d) No personal appearance or hearing on appeal

will be allowed.

(e) The General Counsel shall act upon the

appeal and issue a ﬁnal determination in writing not

later than thirty working days (i.e., excluding

Saturdays, Sundays and legal public holidays) from

the date on which the appeal is received, except that

the General Counsel may extend the thirty days upon

deciding that a fair and equitable review cannot be

made within that period, but only if the individual

is advised in writing of the reason for the extension

and the estimated date by which a ﬁnal

determination will issue. The estimated date should

not be later than the sixtieth working day after

receipt of the appeal unless unusual circumstances,

as described in § 102.25(a), are met.

(f) If the appeal is determined in favor of the

individual, the ﬁnal determination shall include the

speciﬁc corrections or amendments to be made and

a copy thereof shall be transmitted promptly both

to the individual and to the Privacy Ofﬁcer who

issued the initial denial. Upon receipt of such ﬁnal

determination, the Privacy Ofﬁcer promptly shall

R-468January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 102.29

take the actions set forth in § 102.28(a)(2)(i) and

(b).

(g) If the appeal is denied, the ﬁnal

determination shall be transmitted promptly to the

individual and state the reasons for the denial. The

notice of ﬁnal determination also shall inform the

individual of the following:

(1) The right of the individual under the Act

to ﬁle a concise statement of reasons for disagreeing

with the ﬁnal determination. The statement

ordinarily should not exceed one page and USPTO

reserves the right to reject a statement of excessive

length. Such a statement shall be ﬁled with the

General Counsel. It should provide the USPTO

control number assigned to the request, indicate the

date of the ﬁnal determination and be signed by the

individual. The General Counsel shall acknowledge

receipt of such statement and inform the individual

of the date on which it was received.

(2) The facts that any such disagreement

statement ﬁled by the individual will be noted in

the disputed record, that the purposes and uses to

which the statement will be put are those applicable

to the record in which it is noted, and that a copy of

the statement will be provided to persons and

agencies to which the record is disclosed subsequent

to the date of receipt of such statement;

(3) The fact that USPTO will append to any

such disagreement statement ﬁled by the individual,

a copy of the ﬁnal determination or summary thereof

which also will be provided to persons and agencies

to which the disagreement statement is disclosed;

and,

(4) The right of the individual to judicial

review of the ﬁnal determination under 5 U.S.C.

552a(g)(1)(A), as limited by 5 U.S.C. 552a(g)(5).

(h) In making the ﬁnal determination, the

General Counsel shall employ the criteria set forth

in § 102.28(c) and shall deny an appeal only on the

grounds set forth in § 102.28(e).

(i) If an appeal is partially granted and partially

denied, the General Counsel shall follow the

appropriate procedures of this section as to the

records within the grant and the records within the

denial.

(j) Although a copy of the ﬁnal determination

or a summary thereof will be treated as part of the

individual’s record for purposes of disclosure in

instances where the individual has ﬁled a

disagreement statement, it will not be subject to

correction or amendment by the individual.

(k) The provisions of paragraphs (g)(1) through

(g)(3) of this section satisfy the requirements of 5

U.S.C. 552a(e)(3).

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000; para. (b) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003]

§ 102.30 Disclosure of record to person other

than the individual to whom it pertains.

(a) USPTO may disclose a record pertaining to

an individual to a person other than the individual

to whom it pertains only in the following instances:

(1) Upon written request by the individual,

including authorization under § 102.25(f);

(2) With the prior written consent of the

individual;

(3) To a parent or legal guardian under 5

U.S.C. 552a(h);

(4) When required by the Act and not

covered explicitly by the provisions of 5 U.S.C.

552a(b); and

(5) When permitted under 5 U.S.C.

552a(b)(1) through (12), which read as follows:1

(i) To those ofﬁcers and employees of

the agency which maintains the record who have a

need for the record in the performance of their

duties;

(ii) Required under 5 U.S.C. 552;

(iii) For a routine use as deﬁned in 5

U.S.C. 552a(a)(7) and described under 5 U.S.C.

552a(e)(4)(D);

(iv) To the Bureau of the Census for

purposes of planning or carrying out a census or

survey or related activity pursuant to the provisions

of Title 13;

(v) To a recipient who has provided the

agency with advance adequate written assurance

that the record will be used solely as a statistical

1 5 U.S.C. 552a(b)(4) has no application within USPTO.

January 2018R-469

§ 102.30CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

research or reporting record, and the record is to be

transferred in a form that is not individually

identiﬁable;

(vi) To the National Archives and

Records Administration as a record which has

sufﬁcient historical or other value to warrant its

continued preservation by the United States

Government, or for evaluation by the Archivist of

the United States or the designee of the Archivist

to determine whether the record has such value;

(vii) To another agency or to an

instrumentality of any governmental jurisdiction

within or under the control of the United States for

a civil or criminal law enforcement activity if the

activity is authorized by law, and if the head of the

agency or instrumentality has made a written request

to the agency which maintains the record specifying

the particular portion desired and the law

enforcement activity for which the record is sought;

(viii) To a person pursuant to a showing

of compelling circumstances affecting the health or

safety of an individual if upon such disclosure

notiﬁcation is transmitted to the last known address

of such individual;

(ix) To either House of Congress, or, to

the extent of matter within its jurisdiction, any

committee or subcommittee thereof, any joint

committee of Congress or subcommittee of any such

joint committee;

(x) To the Comptroller General, or any

of his authorized representatives, in the course of

the performance of the duties of the General

Accounting Ofﬁce;

(xi) Pursuant to the order of a court of

competent jurisdiction; or

(xii) To a consumer reporting agency in

accordance with section 3711(e) of Title 31.

(b) The situations referred to in paragraph (a)(4)

of this section include the following:

(1) 5 U.S.C. 552a(c)(4) requires

dissemination of a corrected or amended record or

notation of a disagreement statement by USPTO in

certain circumstances;

(2) 5 U.S.C. 552a(d) requires disclosure of

records to the individual to whom they pertain, upon

request; and

(3) 5 U.S.C. 552a(g) authorizes civil action

by an individual and requires disclosure by USPTO

to the court.

accounting of each disclosure by him of any record

contained in a system of records in accordance with

5 U.S.C. 552a(c) (1) and (2). Except for a disclosure

made under 5 U.S.C. 552a(b)(7), the Privacy Ofﬁcer

shall make such accounting available to any

individual, insofar as it pertains to that individual,

on request submitted in accordance with § 102.24.

The Privacy Ofﬁcer shall make reasonable efforts

to notify any individual when any record in a system

of records is disclosed to any person under

compulsory legal process, promptly upon being

informed that such process has become a matter of

public record.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.31 Fees.

The only fees to be charged to or collected from an

individual under the provisions of this part are for

duplication of records at the request of the

individual. The Privacy Ofﬁcer shall charge fees

for duplication of records under the Act in the same

way in which they charge duplication fees under §

102.11, except as provided in this section.

(a) No fees shall be charged or collected for the

following: Search for and retrieval of the records;

review of the records; copying at the initiative of

USPTO without a request from the individual;

transportation of records and personnel; and

ﬁrst-class postage.

(b) It is the policy of USPTO to provide an

individual with one copy of each record corrected

or amended pursuant to his or her request without

charge as evidence of the correction or amendment.

Personnel Management in its published regulations

implementing the Act, USPTO will charge no fee

for a single copy of a personnel record covered by

that agency’s Government-wide published notice

of systems of records.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.31

§ 102.32 Penalties.

(a) The Act provides, in pertinent part:

Any person who knowingly and willfully

requests or obtains any record concerning an

individual from an agency under false pretenses

shall be guilty of a misdemeanor and ﬁned not

more than $5,000. (5 U.S.C. 552a(i)(3)).

(b) A person who falsely or fraudulently

attempts to obtain records under the Act also may

be subject to prosecution under such other criminal

statutes as 18 U.S.C. 494, 495 and 1001.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.33 General exemptions.

(a) Individuals may not have access to records

maintained by USPTO but which were provided by

another agency which has determined by regulation

that such information is subject to general exemption

under 5 U.S.C. 552a(j). If such exempt records are

within a request for access, USPTO will advise the

individual of their existence and of the name and

address of the source agency. For any further

information concerning the record and the

exemption, the individual must contact that source

agency.

(b) The general exemption determined to be

necessary and proper with respect to systems of

records maintained by USPTO, including the parts

of each system to be exempted, the provisions of

the Act from which they are exempted, and the

justiﬁcation for the exemption, is as follows:

Investigative Records—Contract and Grant Frauds

and Employee Criminal

Misconduct—COMMERCE/DEPT.—12. Pursuant

to 5 U.S.C. 552a(j)(2), these records are hereby

determined to be exempt from all provisions of the

Act, except 5 U.S.C. 552a (b), (c) (1) and (2), (e)(4)

(A) through (F), (e) (6), (7), (9), (10), and (11), and

(i). These exemptions are necessary to ensure the

proper functions of the law enforcement activity, to

protect conﬁdential sources of information, to fulﬁll

promises of conﬁdentiality, to prevent interference

with law enforcement proceedings, to avoid the

disclosure of investigative techniques, to avoid the

endangering of law enforcement personnel, to avoid

premature disclosure of the knowledge of criminal

activity and the evidentiary bases of possible

enforcement actions, and to maintain the integrity

of the law enforcement process.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

§ 102.34 Speciﬁc exemptions.

(a)(1) Some systems of records under the

Act which are maintained by USPTO contain, from

time-to-time, material subject to the exemption

appearing at 5 U.S.C. 552a(k)(1), relating to national

defense and foreign policy materials. The systems

of records published in the Federal Register by

USPTO which are within this exemption are:

COMMERCE/PAT-TM-6,

COMMERCE/PAT-TM-7,

COMMERCE/PAT-TM-8,

COMMERCE/PAT-TM-9.

(2) USPTO hereby asserts a claim to

exemption of such materials wherever they might

appear in such systems of records, or any systems

of records, at present or in the future. The materials

would be exempt from 5 U.S.C. 552a (c)(3), (d),

(e)(1), (e)(4) (G), (H), and (I), and (f) to protect

materials required by Executive order to be kept

secret in the interest of the national defense and

foreign policy.

(b) The speciﬁc exemptions determined to be

necessary and proper with respect to systems of

records maintained by USPTO, including the parts

of each system to be exempted, the provisions of

the Act from which they are exempted, and the

justiﬁcation for the exemption, are as follows:

(1)(i) Exempt under 5 U.S.C. 552a(k)(2).

The systems of records exempt (some only

conditionally), the sections of the Act from which

exempted, and the reasons therefor are as follows:

(A) Investigative Records—Contract

and Grant Frauds and Employee Criminal

Misconduct—COMMERCE/DEPT—12, but only

on condition that the general exemption claimed in

§ 102.33(b)(3) is held to be invalid;

(B) Investigative Records—Persons

Within the Investigative Jurisdiction of

USPTO—COMMERCE/DEPT-13;

January 2018R-471

§ 102.34CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Administrative Proceeding

Records—COMMERCE/DEPT-14;

(D) Attorneys and Agents Registered

to Practice Before the

Ofﬁce—COMMERCE/PAT-TM-1;

(E) Complaints, Investigations and

Disciplinary Proceedings Relating to Registered

Patent Attorneys and

Agents—COMMERCE/PAT-TM-2; and

(F) Non-Registered Persons

Rendering Assistance to Patent

Applicants—COMMERCE/PAT-TM-5.

(ii) The foregoing are exempted from 5

U.S.C. 552a (c)(3), (d), (e)(1), (e)(4)(G), (H), and

(I), and (f). The reasons for asserting the exemption

are to prevent subjects of investigation from

frustrating the investigatory process, to insure the

proper functioning and integrity of law enforcement

activities, to prevent disclosure of investigative

techniques, to maintain the ability to obtain

necessary information, to fulﬁll commitments made

to sources to protect their identities and the

conﬁdentiality of information and to avoid

endangering these sources and law enforcement

personnel. Special note is taken of the fact that the

proviso clause in this exemption imports due process

and procedural protections for the individual. The

existence and general character of the information

exempted will be made known to the individual to

whom it pertains.

(2)(i) Exempt under 5 U.S.C. 552a(k)(5).

The systems of records exempt (some only

conditionally), the sections of the act from which

exempted, and the reasons therefor are as follows:

(A) Investigative Records—Contract

and Grant Frauds and Employee Criminal

Misconduct—COMMERCE/DEPT-12, but only on

condition that the general exemption claimed in §

102.33(b)(3) is held to be invalid;

(B) Investigative Records—Persons

Within the Investigative Jurisdiction of

USPTO—COMMERCE/DEPT-13; and

Administrative Proceeding

Records—COMMERCE/DEPT-14.

(ii) The foregoing are exempted from 5

U.S.C. 552a (c)(3), (d), (e)(1), (e)(4)(G), (H), and

(I), and (f). The reasons for asserting the exemption

are to maintain the ability to obtain candid and

necessary information, to fulﬁll commitments made

to sources to protect the conﬁdentiality of

information, to avoid endangering these sources

and, ultimately, to facilitate proper selection or

continuance of the best applicants or persons for a

given position or contract. Special note is made of

the limitation on the extent to which this exemption

may be asserted. The existence and general character

of the information exempted will be made known

to the individual to whom it pertains.

exemption under 5 U.S.C. 552a(k)(3), (4), (6) and

(7).

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

Appendix to Part 102 - Systems of Records

Noticed by Other Federal Agencies1 and

Applicable to USPTO Records and

Applicability of this Part Thereto

Other federal agencyCategory of records

Ofﬁce of Personnel

Management.2

Federal Personnel Records

Department of Labor.3Federal Employee

Compensation Act Program

Equal Employment

Opportunity Commission.4

Equal Employment

Opportunity Appeal

Complaints

Merit Systems Protection

Board.5

Formal

Complaints/Appeals of

Adverse Personnel Actions

1 Other than systems of records noticed by the

Department of Commerce. Where the system of records

applies only to USPTO, these regulations apply. Where

the system of records applies generally to components

of the Department of Commerce, the regulations of that

department attach at the point of any denial for access

or for correction or amendment.

2 The provisions of this part do not apply to these

records covered by notices of systems of records

published by the Ofﬁce of Personnel Management for

all agencies. The regulations of OPM alone apply.

3 The provisions of this part apply only initially to

these records covered by notices of systems of records

published by the U.S. Department of Labor for all

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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.34

Other federal agencyCategory of records

agencies. The regulations of that department attach at

the point of any denial for access or for correction or

amendment.

4 The provisions of this part do not apply to these

records covered by notices of systems of records

published by the Equal Employment Opportunity

Commission for all agencies. The regulations of the

Commission alone apply.

5 The provisions of this part do not apply to these

records covered by notices of systems of records

published by the Merit Systems Protection Board for

all agencies. The regulations of the Board alone apply.

[Added, 65 FR 52916, Aug. 31, 2000, effective

Oct. 2, 2000]

PART 104 — LEGAL PROCESSES

General Provisions

Sec.

104.1 Deﬁnitions.

104.2 Address for mail and service; telephone

number.

104.3 Waiver of rules.

104.4 Relationship of this Part to the Federal

Rules of Civil or Criminal Procedure.

Service of Process

104.11 Scope and purpose.

104.12 Acceptance of service of process.

Employee Testimony and Production of Documents in

Legal Proceedings

104.21 Scope and purpose.

104.22 Demand for testimony or production of

documents.

104.23 Expert or opinion testimony.

104.24 Demands or requests in legal proceedings

for records protected by conﬁdentiality

statutes.

Employee Indemniﬁcation

104.31 Scope.

104.32 Procedure for requesting indemniﬁcation.

Tort Claims

104.41 Procedure for ﬁling claims.

104.42 Finality of settlement or denial of claims.

Subpart A — General Provisions

§ 104.1 Deﬁnitions.

Demand means a request, order, or subpoena for

testimony or documents for use in a legal

proceeding.

Director means the Under Secretary of Commerce

for Intellectual Property and Director of the United

States Patent and Trademark Ofﬁce (see § 1.9(j)).

Document means any record, paper, and other

property held by the Ofﬁce, including without

limitation, ofﬁcial letters, telegrams, memoranda,

reports, studies, calendar and diary entries, maps,

graphs, pamphlets, notes, charts, tabulations,

analyses, statistical or informational accumulations,

any kind of summaries of meetings and

conversations, ﬁlm impressions, magnetic tapes,

and sound or mechanical reproductions.

Employee means any current or former ofﬁcer or

employee of the Ofﬁce.

Legal proceeding means any pretrial, trial, and

posttrial stages of existing or reasonably anticipated

judicial or administrative actions, hearings,

investigations, or similar proceedings before courts,

commissions, boards or other tribunals, foreign or

domestic. This phrase includes all phases of

discovery as well as responses to formal or informal

requests by attorneys or others involved in legal

proceedings.

Ofﬁce means the United States Patent and

Trademark Ofﬁce, including any operating unit in

the United States Patent and Trademark Ofﬁce, and

its predecessors, the Patent Ofﬁce and the Patent

and Trademark Ofﬁce.

Ofﬁcial business means the authorized business of

the Ofﬁce.

General Counsel means the General Counsel of the

Ofﬁce.

January 2018R-473

§ 104.1CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

Testimony means a statement in any form,

including personal appearances before a court or

other legal tribunal, interviews, depositions,

telephonic, televised, or videotaped statements or

any responses given during discovery or similar

proceedings, which response would involve more

than the production of documents, including a

declaration under 35 U.S.C. 25 or 28 U.S.C. 1746.

United States means the Federal Government, its

departments and agencies, individuals acting on

behalf of the Federal Government, and parties to

the extent they are represented by the United States.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001; second sentence revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003]

§ 104.2 Address for mail and service;

telephone number.

(a) Mail under this part should be addressed to

the Ofﬁce of the General Counsel, United States

Patent and Trademark Ofﬁce, P.O. Box 1450,

Alexandria, Virginia 22313-1450.

(b) Service by hand should be made during

business hours to the Ofﬁce of the General Counsel,

10B20, Madison Building East, 600 Dulany Street,

Alexandria, Virginia.

reached by telephone at 571–272–7000 during

business hours.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001; paras. (b) and (c) revised, 70 FR 10488,

Mar. 4, 2005, effective Mar. 4, 2005; para. (a) revised,

75 FR 36294, June 25, 2010, effective June 25, 2010]

§ 104.3 Waiver of rules.

In extraordinary situations, when the interest of

justice requires, the General Counsel may waive or

suspend the rules of this part, sua sponte or on

petition of an interested party to the Director, subject

to such requirements as the General Counsel may

impose. Any such petition must be accompanied by

a petition fee of $130.00.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001; revised, 69 FR 56481, Sept. 21, 2004,

effective Oct. 21, 2004]

§ 104.4 Relationship of this Part to the

Federal Rules of Civil or Criminal

Procedure.

Nothing in this part waives or limits any requirement

under the Federal Rules of Civil or Criminal

Procedure.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

Subpart B — Service of Process

§ 104.11 Scope and purpose.

(a) This subpart sets forth the procedures to be

followed when a summons and complaint is served

on the Ofﬁce or on the Director or an employee in

his or her ofﬁcial capacity.

(b) This subpart is intended, and should be

construed, to ensure the efﬁcient administration of

the Ofﬁce and not to impede any legal proceeding.

the procedures for which are set out in subpart C.

(d) This subpart does not apply to service of

process made on an employee personally on matters

not related to ofﬁcial business of the Ofﬁce or to

the ofﬁcial responsibilities of the employee.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

§ 104.12 Acceptance of service of process.

(a) Any summons and complaint to be served

in person or by registered or certiﬁed mail or as

otherwise authorized by law on the Ofﬁce, on the

Director, or on an employee in his or her ofﬁcial

capacity, shall be served as indicated in § 104.2.

(b) Any employee of the Ofﬁce served with a

summons and complaint shall immediately notify,

and shall deliver the summons and complaint to, the

Ofﬁce of the General Counsel.

complaint shall note on the summons and complaint

the date, hour, and place of service and whether

service was by hand or by mail.

(d) When a legal proceeding is brought to hold

an employee personally liable in connection with

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MANUAL OF PATENT EXAMINING PROCEDURE§ 104.2

an action taken in the conduct of ofﬁcial business,

rather than liable in an ofﬁcial capacity, the

employee by law is to be served personally with

process. See Fed. R. Civ. P. 4(e). An employee sued

personally for an action taken in the conduct of

ofﬁcial business shall immediately notify and deliver

a copy of the summons and complaint to the General

Counsel.

(e) An employee sued personally in connection

with ofﬁcial business may be represented by the

Department of Justice at its discretion (28 CFR

50.15 and 50.16).

(f) The Ofﬁce will only accept service of

process for an employee in the employee’s ofﬁcial

capacity.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

Subpart C — Employee Testimony and

Production of Documents in Legal

Proceedings

§ 104.21 Scope and purpose.

(a) This subpart sets forth the policies and

procedures of the Ofﬁce regarding the testimony of

employees as witnesses in legal proceedings and

the production or disclosure of information

contained in Ofﬁce documents for use in legal

proceedings pursuant to a demand.

(b) Exceptions. This subpart does not apply to

any legal proceeding in which:

(1) An employee is to testify regarding facts

or events that are unrelated to ofﬁcial business; or

(2) A former employee is to testify as an

expert in connection with a particular matter in

which the former employee did not participate

personally while at the Ofﬁce.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

§ 104.22 Demand for testimony or

production of documents.

(a) Whenever a demand for testimony or for the

production of documents is made upon an employee,

the employee shall immediately notify the Ofﬁce

of the General Counsel at the telephone number or

addresses in §104.2 and make arrangements to send

the subpoena to the General Counsel promptly.

(b) An employee may not give testimony,

produce documents, or answer inquiries from a

person not employed by the Ofﬁce regarding

testimony or documents subject to a demand or a

potential demand under the provisions of this subpart

without the approval of the General Counsel. The

General Counsel may authorize the provision of

certiﬁed copies not otherwise available under Part

1 of this title subject to payment of applicable fees

under § 1.19.

(c)(1) Demand for testimony or

documents. A demand for the testimony of an

employee under this subpart shall be addressed to

the General Counsel as indicated in § 104.2.

(2) Subpoenas. A subpoena for employee

testimony or for a document shall be served in

accordance with the Federal Rules of Civil or

Criminal Procedure or applicable state procedure,

and a copy of the subpoena shall be sent to the

General Counsel as indicated in § 104.2.

(3) Afﬁdavits. Except when the United

States is a party, every demand shall be accompanied

by an afﬁdavit or declaration under 28 U.S.C. 1746

or 35 U.S.C. 25(b) setting forth the title of the legal

proceeding, the forum, the requesting party’s interest

in the legal proceeding, the reason for the demand,

a showing that the desired testimony or document

is not reasonably available from any other source,

and, if testimony is requested, the intended use of

the testimony, a general summary of the desired

testimony, and a showing that no document could

be provided and used in lieu of testimony.

(d) Failure of the attorney to cooperate in good

faith to enable the General Counsel to make an

informed determination under this subpart may serve

as a basis for a determination not to comply with

the demand.

(e) A determination under this subpart to comply

or not to comply with a demand is not a waiver or

an assertion of any other ground for noncompliance,

including privilege, lack of relevance, or technical

deﬁciency.

(f) Noncompliance. If the General Counsel

makes a determination not to comply, he or she will

seek Department of Justice representation for the

employee and will attempt to have the subpoena

January 2018R-475

§ 104.22CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

modiﬁed or quashed. If Department of Justice

representation cannot be arranged, the employee

should appear at the time and place set forth in the

subpoena. In such a case, the employee should

produce a copy of these rules and state that the

General Counsel has advised the employee not to

provide the requested testimony nor to produce the

requested document. If a legal tribunal rules that the

demand in the subpoena must be complied with, the

employee shall respectfully decline to comply with

the demand, citing United States ex rel. Touhy v.

Ragen, 340 U.S. 462 (1951).

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

§ 104.23 Expert or opinion testimony.

(a)(1) If the General Counsel authorizes an

employee to give testimony in a legal proceeding

not involving the United States, the testimony, if

otherwise proper, shall be limited to facts within the

personal knowledge of the employee. Employees,

with or without compensation, shall not provide

expert testimony in any legal proceedings regarding

Ofﬁce information, subjects, or activities except on

behalf of the United States or a party represented

by the United States Department of Justice.

(2) The General Counsel may authorize an

employee to appear and give the expert or opinion

testimony upon the requester showing, pursuant to

§ 104.3 of this part, that exceptional circumstances

warrant such testimony and that the anticipated

testimony will not be adverse to the interest of the

Ofﬁce or the United States.

(b)(1) If, while testifying in any legal

proceeding, an employee is asked for expert or

opinion testimony regarding Ofﬁce information,

subjects, or activities, which testimony has not been

approved in advance in writing in accordance with

the regulations in this subpart, the witness shall:

(i) Respectfully decline to answer on the

grounds that such expert or opinion testimony is

forbidden by this subpart;

(ii) Request an opportunity to consult

with the General Counsel before giving such

testimony; and

(iii) Explain that upon such consultation,

approval for such testimony may be provided.

(2) If the tribunal conducting the proceeding

then orders the employee to provide expert or

opinion testimony regarding Ofﬁce information,

subjects, or activities without the opportunity to

consult with the General Counsel, the employee

shall respectfully refuse to provide such testimony,

citing United States ex rel. Touhy v. Ragen, 340

U.S. 462 (1951).

in this subpart and provides expert or opinion

testimony regarding Ofﬁce information, subjects,

or activities in a legal proceeding without the

aforementioned consultation, the employee shall,

as soon after testifying as possible, inform the

General Counsel that such testimony was given and

provide a written summary of the expert or opinion

testimony provided.

(d) Proceeding where the United States is a

party. In a proceeding in which the United States is

a party or is representing a party, an employee may

not testify as an expert or opinion witness for any

party other than the United States.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

§ 104.24 Demands or requests in legal

proceedings for records protected by

conﬁdentiality statutes.

Demands in legal proceedings for the production of

records, or for the testimony of employees regarding

information protected by the conﬁdentiality

provisions of the Patent Act (35 U.S.C. 122), the

Privacy Act (5 U.S.C. 552a), the Trade Secrets Act

(18 U.S.C. 1905), or any other conﬁdentiality

statute, must satisfy the requirements for disclosure

set forth in those statutes and associated rules before

the records may be provided or testimony given.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

Subpart D — Employee Indemniﬁcation

§ 104.31 Scope.

The procedure in this subpart shall be followed if a

civil action or proceeding is brought, in any court,

against an employee (including the employee’s

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MANUAL OF PATENT EXAMINING PROCEDURE§ 104.23

estate) for personal injury, loss of property, or death,

resulting from the employee’s activities while acting

within the scope of the employee’s ofﬁce or

employment. When the employee is incapacitated

or deceased, actions required of an employee should

be performed by the employee’s executor,

administrator, or comparable legal representative.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

§ 104.32 Procedure for requesting

indemniﬁcation.

(a) After being served with process or pleadings

in such an action or proceeding, the employee shall

within ﬁve (5) calendar days of receipt, deliver to

the General Counsel all such process and pleadings

or an attested true copy thereof, together with a fully

detailed report of the circumstances of the incident

giving rise to the court action or proceeding.

(b)(1) An employee may request

indemniﬁcation to satisfy a verdict, judgment, or

award entered against that employee only if the

employee has timely satisﬁed the requirements of

paragraph (a) of this section.

(2) No request for indemniﬁcation will be

considered unless the employee has submitted a

written request through the employee’s supervisory

chain to the General Counsel with:

(i) Appropriate documentation, including

copies of the verdict, judgment, appeal bond, award,

or settlement proposal;

(ii) The employee’s explanation of how

the employee was acting within the scope of the

employee’s employment; and;

(iii) The employee’s statement of

whether the employee has insurance or any other

source of indemniﬁcation.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

Subpart E — Tort Claims

§ 104.41 Procedure for ﬁling claims.

Administrative claims against the Ofﬁce ﬁled

pursuant to the administrative claims provision of

the Federal Tort Claims Act (28 U.S.C. 2672) and

the corresponding Department of Justice regulations

(28 CFR Part 14) shall be ﬁled with the General

Counsel as indicated in §104.2.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

§ 104.42 Finality of settlement or denial of

claims.

Only a decision of the Director or the General

Counsel regarding settlement or denial of any claim

under this subpart may be considered ﬁnal for the

purpose of judicial review.

[Added, 66 FR 47387, Sept. 12, 2001, effective

Sept. 12, 2001]

SUBCHAPTER C — PROTECTION OF

FOREIGN MASK WORKS

PART 150 — REQUESTS FOR PRESIDENTIAL

PROCLAMATIONS PURSUANT TO 17 U.S.C.

902(a)(2)

Sec.

150.1 Deﬁnitions.

150.2 Initiation of evaluation.

150.3 Submission of requests.

150.4 Evaluation.

150.5 Duration of proclamation.

150.6 Mailing address.

§ 150.1 Deﬁnitions.

(a) Director means the Under Secretary of

Commerce for Intellectual Property and Director of

the United States Patent and Trademark Ofﬁce (see

§ 1.9(j)).

(b) Foreign government means the

duly-constituted executive of a foreign nation, or

an international or regional intergovernmental

organization which has been empowered by its

member states to request issuance of Presidential

proclamations on their behalf under this part.

Secretary of Commerce under 17 U.S.C. 914.

(d) Mask work means a series of related images,

however ﬁxed or encoded —

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§ 150.1CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

(1) Having or representing the

predetermined, three-dimensional pattern of

metallic, insulating, or semiconductor material

present or removed from the layers of a

semiconductor chip product; and

(2) In which series the relation of the images

to one another is that each image has the pattern of

the surface of one form of the semiconductor chip

product.

(e) Presidential proclamation means an action

by the President extending to foreign nationals,

domiciliaries and sovereign authorities the privilege

of applying for registrations for mask works

pursuant to 17 U.S.C. 902.

(f) Request means a request by a foreign

government for the issuance of a Presidential

proclamation.

(g) Proceeding means a proceeding to issue an

interim order extending protection to foreign

nationals, domiciliaries and sovereign authorities

under 17 U.S.C. Chapter 9.

(h) Secretary means the Secretary of

Commerce.

[Added, 53 FR 24447, June 29, 1988, effective

August 1, 1988; para. (a) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003]

§ 150.2 Initiation of evaluation.

(a) The Director independently or as directed

by the Secretary, may initiate an evaluation of the

propriety of recommending the issuance, revision,

suspension or revocation of a section 902

proclamation.

(b) The Director shall initiate an evaluation of

the propriety of recommending the issuance of a

section 902 proclamation upon receipt of a request

from a foreign government.

[Added, 53 FR 24447, June 29, 1988, effective

August 1, 1988; revised, 68 FR 14332, Mar. 25, 2003,

effective May 1, 2003]

§ 150.3 Submission of requests.

(a) Requests for the issuance of a section 902

proclamation shall be submitted by foreign

governments for review by the Director.

(b) Requests for issuance of a proclamation shall

include:

(1) A copy of the foreign law or legal rulings

that provide protection for U.S. mask works which

provide a basis for the request.

(2) A copy of any regulations or

administrative orders implementing the protection.

(3) A copy of any laws, regulations, or

administrative orders establishing or regulating the

registration (if any) of mask works.

(4) Any other relevant laws, regulations, or

administrative orders.

(5) All copies of laws, legal rulings,

regulations, or administrative orders submitted must

be in unedited, full-text form, and if possible, must

be reproduced from the original document.

(6) All material submitted must be in the

original language, and if not in English, must be

accompanied by a certiﬁed English translation.

[Added, 53 FR 24447, June 29, 1988, effective

August 1, 1988; para. (a) revised, 68 FR 14332, Mar. 25,

2003, effective May 1, 2003]

§ 150.4 Evaluation.

(a) Upon submission of a request by a foreign

government for the issuance of a section 902

proclamation, if an interim order under section 914

has not been issued, the Director may initiate a

section 914 proceeding if additional information is

required.

(b) If an interim order under section 914 has

been issued, the information obtained during the

section 914 proceeding will be used in evaluating

the request for a section 902 proclamation.

foreign government for a section 902 proclamation,

or after a determination is made by the Director to

initiate independently an evaluation pursuant to §

150.2(a) of this part, a notice will be published in

the Federal Register to request relevant and

material comments on the adequacy and

effectiveness of the protection afforded U.S. mask

works under the system of law described in the

notice. Comments should include detailed

explanations of any alleged deﬁciencies in the

foreign law or any alleged deﬁciencies in its

implementation. If the alleged deﬁciencies include

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MANUAL OF PATENT EXAMINING PROCEDURE§ 150.2

problems in administration such as registration, the

respondent should include as speciﬁcally as possible

full detailed explanations, including dates for and

the nature of any alleged problems. Comments shall

be submitted to the Director within sixty (60) days

of the publication of the Federal Register notice.

(d) The Director shall notify the Register of

Copyrights and the Committee on the Judiciary of

the Senate and the House of Representatives of the

initiation of an evaluation under these regulations.

(e) If the written comments submitted by any

party present relevant and material reasons why a

proclamation should not issue, the Director will:

(1) Contact the party raising the issue for

veriﬁcation and any needed additional information;

(2) Contact the requesting foreign

government to determine if the issues raised by the

party can be resolved; and,

(i) If the issues are resolved, continue

with the evaluation; or,

(ii) If the issues cannot be resolved on

this basis, hold a public hearing to gather additional

information.

(f) The comments, the section 902 request,

information obtained from a section 914 proceeding,

if any, and information obtained in a hearing held

pursuant to paragraph (e)(ii) of this section, if any,

will be evaluated by the Director.

(g) The Director will forward the information

to the Secretary, together with an evaluation and a

draft recommendation.

(h) The Secretary will forward a

recommendation regarding the issuance of a section

902 proclamation to the President.

[Added, 53 FR 24448, June 29, 1988, effective

August 1, 1988; paras. (a) & (c)-(f) revised, 68 FR 14332,

Mar. 25, 2003, effective May 1, 2003]

§ 150.5 Duration of proclamation.

(a) The recommendation for the issuance of a

proclamation may include terms and conditions

regarding the duration of the proclamation.

(b) Requests for the revision, suspension or

revocation of a proclamation may be submitted by

any interested party. Requests for revision,

suspension or revocation of a proclamation will be

considered in substantially the same manner as

requests for the issuance of a section 902

proclamation.

[Added 53 FR 24448, June 29, 1988, effective

August 1, 1988]

§ 150.6 Mailing address.

Requests and all correspondence pursuant to these

guidelines shall be addressed to: Mail Stop

Congressional Relations, Director of the United

States Patent and Trademark Ofﬁce, P.O. Box 1450,

Alexandria, Virginia 22313-1450.

[Added 53 FR 24448, June 29, 1988, effective Aug.

1, 1988; revised, 68 FR 14332, Mar. 25, 2003, effective

May 1, 2003; revised, 70 FR 10488, Mar. 4, 2005,

effective Mar. 4, 2005]

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§ 150.6CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE

MPEP R IP 751 S C UK Consolidated Rules

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