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
- 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.
- 1.9 Definitions.
- 1.10 Filing of correspondence by Priority Mail Express®.
- 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]
- 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.
- 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.
- 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.
- 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]
- 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]
- 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.
- 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]
- 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.
- 1.97 Filing of information disclosure statement.
- 1.98 Content of information disclosure statement.
- 1.99 [Reserved]
- 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]
- 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.
- 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.
- 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.
- 1.129 Transitional procedures for limited examination after final rejection and restriction practice.
- 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.
- 1.133 Interviews.
- 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]
- 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.
- 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.
- 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.
- 1.171 Application for reissue.
- 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]
- 1.181 Petition to the Director.
- 1.182 Questions not specifically provided for.
- 1.183 Suspension of rules.
- 1.184 [Reserved]
- 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.
- 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.
- 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]
- 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.
- 1.301 [Reserved]
- 1.302 [Reserved]
- 1.303 [Reserved]
- 1.304 [Reserved]
- 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]
- 1.321 Statutory disclaimers, including terminal disclaimers.
- 1.321 (pre‑AIA) Statutory disclaimers, including terminal disclaimers.
- 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.
- 1.331 [Reserved]
- 1.332 [Reserved]
- 1.333 [Reserved]
- 1.334 [Reserved]
- 1.335 Filing of notice of arbitration awards.
- 1.351 Amendments to rules will be published.
- 1.352 [Reserved]
- 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.
- 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.
- 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]
- 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.
- 1.445 International application filing, processing and search fees.
- 1.446 Refund of international application filing and processing fees.
- 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.
- 1.455 Representation in international applications.
- 1.461 Procedures for transmittal of record copy to the International Bureau.
- 1.465 Timing of application processing based on the priority date.
- 1.468 Delays in meeting time limits.
- 1.471 Corrections and amendments during international processing.
- 1.472 Changes in person, name, or address of applicants and inventors.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- 1.570 Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- 1.902 Processing of prior art citations during an inter partes reexamination proceeding.
- 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.
- 1.931 Order for inter partes reexamination.
- 1.933 Patent owner duty of disclosure in inter partes reexamination proceedings.
- 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.
- 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.
- 1.955 Interviews prohibited in inter partes reexamination proceedings.
- 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.
- 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.
- 1.983 Appeal to the United States Court of Appeals for the Federal Circuit 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.
- 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding.
- 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.
- 1.1011 Applicant for international design application.
- 1.1012 Applicant’s Contracting Party.
- 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.
- 1.1026 Reproductions.
- 1.1027 Specimens.
- 1.1028 Deferment of publication.
- 1.1031 International design application fees.
- 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.
- 1.1045 Procedures for transmittal of international design application to the International Bureau.
- 1.1051 Relief from prescribed time limits.
- 1.1052 Conversion to a design application under 35 U.S.C. chapter 16.
- 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.
- PART 3 — ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
- 3.1 Definitions.
- 3.11 Documents which will be recorded.
- 3.16 Assignability of trademarks prior to filing an allegation of use.
- 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.
- 3.27 Mailing address for submitting documents to be recorded.
- 3.28 Requests for recording.
- 3.31 Cover sheet content.
- 3.34 Correction of cover sheet errors.
- 3.41 Recording fees.
- 3.51 Recording date.
- 3.54 Effect of recording.
- 3.56 Conditional assignments.
- 3.58 Governmental registers.
- 3.61 Domestic representative.
- 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.
- 3.81 Issue of patent to assignee.
- 3.85 Issue of registration to assignee.
- PART 4 — COMPLAINTS REGARDING INVENTION PROMOTERS
- PART 5 — SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES
- 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]
- 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.
- 5.31 [Reserved]
- 5.32 [Reserved]
- 5.33 [Reserved]
- Index I — RULES RELATING TO PATENTS
- PART 10 — [Reserved]
- PART 11 — REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE
- 11.1 Definitions.
- 11.2 Director of the Office of Enrollment and Discipline.
- 11.3 Suspension of rules.
- 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.
- 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]
- 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]
- 11.100 [Reserved]
- 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]
- 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]
- 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]
- 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]
- 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]
- 11.701 Communications concerning a practitioner’s services.
- 11.702 Advertising.
- 11.703 Direct contact with prospective clients.
- 11.704 Communication of fields of practice and specialization.
- 11.705 Firm names and letterheads.
- 11.706 - 11.800 [Reserved]
- 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.
- 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
- 41.1 Policy.
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- PART 42 — TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
- 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.
- 42.15 Fees.
- 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.
- 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.
- 42.70 Oral argument.
- 42.71 Decision on petitions or motions.
- 42.72 Termination of trial.
- 42.73 Judgment.
- 42.74 Settlement.
- 42.80 Certificate.
- 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.
- 42.108 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.
- 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.
- 42.208 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.
- 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.
- 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.
- 42.408 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.
- PART 90 — JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD DECISIONS
- PART 102 — DISCLOSURE OF GOVERNMENT INFORMATION
- 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.
- 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.
- 102.33 General exemptions.
- 102.34 Specific exemptions.
- PART 104 — LEGAL PROCESSES
- 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.
- 104.11 Scope and purpose.
- 104.12 Acceptance of service of process.
- 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.
- 104.31 Scope.
- 104.32 Procedure for requesting indemnification.
- 104.41 Procedure for filing claims.
- 104.42 Finality of settlement or denial of claims.
- PART 150 — REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 U.S.C. 902(a)(2)
![](asset-1.png)
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.
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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.
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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.
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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.
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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
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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
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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.”
(c) For reexamination or supplemental
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)
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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.
(c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec.
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.
(c) Since different matters may be considered
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
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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;
or
(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
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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
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§ 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).
(c) Correspondence relating to a trial proceeding
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
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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]
(c) Correspondence delivered by hand. In
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
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(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
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(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
(C) Transmitted via the Office
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;
(C) Papers filed in contested cases
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
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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.
(c) The Office may require additional evidence
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.
(c) A published application as used in this
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
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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
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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.
(c) 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
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.10
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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
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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.
(c) All requests for reexamination for which all
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
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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.
(c) Any request by a member of the public
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]
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§ 1.12CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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[*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.
(c) Any request by a member of the public
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)
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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
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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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.14
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specification, drawings, and file contents of the
application.
(c) Power to inspect a pending or abandoned
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;
or
(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
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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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.14
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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*]
* * * * *
(c) Power to inspect a pending or abandoned
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
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§ 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
(c) Basic fee for filing each application for an
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,
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.15
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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
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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.
(c) For filing a request for prioritized
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
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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
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§ 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
![](asset-25.png)
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
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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
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(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.
(C) [Reserved]
(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.
(C) [Reserved]
(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.
(c) Library service (35 U.S.C. 13): For providing
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
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(b) Processing fee for correcting inventorship in
a patent (§ 1.324).........................................150.00
(c) In reexamination proceedings:
(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;
(C) Text written in a non-script type
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
(C) The certifications required pursuant
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
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(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
![](asset-2a.png)
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
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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.
(c) [Reserved]
(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
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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.
(c) A fee transmittal letter may be signed by a
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
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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.
(c) A deposit account holder may replenish the
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
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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.
(c) If the Director decides not to institute a
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
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small business concern, or nonprofit organization)
under paragraphs (a)(1) through (a)(3) of this
section.
(1) Person. A person, as used in paragraph
(c) of this section, means any inventor or other
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));
(C) Any nonprofit scientific or
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
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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).
(c) Assertion of small entity status. Any party
(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
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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
(c) of this section, means any inventor or other
individual (e.g., an individual to whom an inventor
January 2018R-49
§ 1.27
(pre-AIA)
CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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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));
(C) Any nonprofit scientific or
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).
(c) Assertion of small entity status. Any party
(person, small business concern or nonprofit
organization) should make a determination, pursuant
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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
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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.
(c) How errors in small entity status are
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.28
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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;
(C) The deficiency owed amount (for
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
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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.
(c) If an applicant’s, inventor’s, joint inventor’s,
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.29
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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
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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.
(c) A power of attorney may only name as
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)
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.31
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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.
(c) A power of attorney may only name as
representative:
(1) One or more joint inventors (§ 1.45);
January 2018R-57
§ 1.32
(pre-AIA)
CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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(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.
(c) All notices, official letters, and other
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
![](asset-3b.png)
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.
(c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec.
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
![](asset-3c.png)
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
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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
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(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.
(c) The inventorship of a provisional application
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)
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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.
(c) Any person authorized by the applicant may
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.
(c) If fewer than all joint inventors are applying
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
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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.
(c) If multiple inventors are named in a
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.43
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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.
(c) If multiple inventors are named in a
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
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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)
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§ 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.
(c) The Office will send notice of the filing of
the application to all inventors who have not joined
in the application at the address(es) provided in the
petition under 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.
(c) Any request to correct or change the
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
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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.
(c) A complete provisional application filed
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
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[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
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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.
(c) Interlineation, erasure, cancellation, or other
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
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(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 §
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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.
(c) Application filing requirements —
Provisional application. The filing date of a
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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;
or
(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;
or
(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
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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
(C) Termination of proceedings on
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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(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
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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
(c) of this section does not include the cover sheet
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
(c) of this section does not include the cover sheet
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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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.
(c) and (c)(3), and paras. (d)(2)(iv), (f), and (h) revised,
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.
(c) Application filing requirements —
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
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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;
or
(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;
or
(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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(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:
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(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.
(c) Delayed filing of subsequent application. If
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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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.
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(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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(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
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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.
(c) Individuals associated with the filing or
prosecution of a patent application within the
meaning of this section are:
(1) Each inventor named in the application;
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(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*]
*****
(c) Individuals associated with the filing or
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
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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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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.
(c) Except as provided in paragraph (a) or (b)
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]
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[* 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.
(c) Chemical and mathematical formulae and
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
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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.
(c) Upon request by an applicant and payment
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:
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(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.
(c) A person may not execute an oath or
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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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.
(c) Unless such information is supplied on an
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
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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,
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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.
(c) A person may not execute a substitute
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
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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.
(c) The Office will not require a person who has
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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[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.
(c) [Reserved]
[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
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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.
(c) In the case of an improvement, the
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,
“©1983 John Doe”(17 U.S.C. 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
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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(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.
(c) One or more claims may be presented in
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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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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(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.
(c) Correcting and updating an application
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,
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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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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
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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.
(c) Supplemental application data sheets.
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.]
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§ 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).
(c) The text of the specification sections defined
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
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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
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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.
(c) Delayed claims under 35 U.S.C. 119(e) for
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
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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
(C) An international application filed
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
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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
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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).
(c) Whenever the nature of the subject matter
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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§ 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.
(c) Where the drawings in a nonprovisional
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;
or
(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
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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.
(c) Identification of drawings. Identifying
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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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.
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(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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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
copyright or mask work notice may appear in the
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
by law. For example, “©1983 John Doe” (17 U.S.C.
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
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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.
(c) If a corrected drawing is required or if a
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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(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.
(c) Unless the model or exhibit substantially
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.
(c) Where applicant is notified, pursuant to
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.
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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.
(c) As an appendix which will not be printed:
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;
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(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.
(c) An information disclosure statement shall
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;
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(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.
(c) When the disclosures of two or more patents
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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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
(c) or (d) of this section with a showing which, in
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.
(c) A petition to make an application special
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
(c) of this section must be accompanied by the fee
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
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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).
(c) Limited suspension of action after a request
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.
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[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.
(c) Rejection of claims.
(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.
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(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
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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
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(c) A reply, or a failure to reply, to a
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.
(c) A reply, or a failure to reply, to a
requirement for information under this section will
be governed by §§ 1.135 and 1.136.
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![](asset-7d.png)
[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
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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);
(C) Placement of the application in
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.
(c) In amending in reply to a rejection of claims
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
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![](asset-7f.png)
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.
(c) Reply to a final rejection or action must
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.
(c) A submission as used in this section
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
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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.
(c) The admission of, or refusal to admit, any
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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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
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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.
(c) Claims. Amendments to a claim must be
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”
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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.
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(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.
(c) A substitute specification submitted under
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
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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.
(c) The provisions of this section shall not be
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
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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.
(c) When this section is not available. The
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,
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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.
(c) When any claim of an application or a patent
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
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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.
(c) When reply by the applicant is a bona fide
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;
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(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;
or
(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).
(c) If an applicant is notified in a “Notice of
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)
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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.
(c) Reply. In an application abandoned under
§ 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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(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.
(c) An applicant seeking to abandon an
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
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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
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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,
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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.
(c) The text of the specification sections defined
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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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).
(c) The specification should include the
following sections in order:
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(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]
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§ 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
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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.
(c) Status of claims and support for claim
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,
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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.
(c) The inventor, or each individual who is a
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.
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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.
(c) Having once stated an error upon which the
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.
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[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.
(c) If any one of the several reissue applications
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
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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.
(c) When a petition is taken from an action or
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
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1993, effective Jan. 3, 1994; paras. (a) & (b) revised, 62
FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para.
(c) revised, 68 FR 70996, Dec. 22, 2003, effective Jan.
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.
(c) An application filed under 35 U.S.C. 111(a)
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
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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.
(c) An application filed under 35 U.S.C. 111(a)
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
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(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).
(c) If an applicant who has submitted a
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.
(c) At applicant’s option, the patent application
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
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![](asset-9b.png)
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.
(c) At applicant’s option, the patent application
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
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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).
(c) The applicant must also concurrently submit
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
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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.
(c) See § 41.106(e) or § 42.6(e) of this title for
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.
(c) revised, 69 FR 49959, Aug. 12, 2004, effective Sept.
January 2018R-157
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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:
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(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.
(c) Any third-party submission under this
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 §
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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.
(c) In addition to compliance with paragraphs
(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]
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§ 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.
(c) A waiver filed with a request for a statutory
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
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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.
(c) If the examination pursuant to this section
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]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.295
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§ 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;
or
(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
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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;
or
(4) For an interference or derivation
proceeding.
(c) Once the issue fee has been paid, the
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]
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§ 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).
(c) A terminal disclaimer, when filed to obviate
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
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(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;
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(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).
(c) A terminal disclaimer, when filed to obviate
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
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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).
(c) For correction of inventorship in an
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]
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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.
(c) Any award by an arbitrator pursuant to 35
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.
(c) The application filing dates for purposes of
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.
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(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.
(c) A fee address must be an address associated
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]
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§ 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.
(c) In submitting maintenance fees and any
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]
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§ 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.
(c) Any petition filed under this section must
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.
(c) Any petition under this section must be
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.
(c) Administrative Instructions means that body
of instructions for operating under the Patent
Cooperation Treaty referred to in PCT Rule 89.
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(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.”
(c) The major functions of the Receiving Office
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.”
(c) The major functions of the International
Searching Authority include:
(1) Approving or establishing the title and
abstract;
(2) Considering the matter of unity of
invention;
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(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.”
(c) The major functions of the United States
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.”
(c) The major functions of the International
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
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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
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as provided in § 1.422 or § 1.424. Joint inventors
must jointly apply for an international application.
(c) 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.
(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.
(c) For the purposes of designations other than
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)
![](asset-b1.png)
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
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§ 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.
(c) Payment of the international filing fee (PCT
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
(c) of this section is not timely made in accordance
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.
(c) and (d) revised, 63 FR 29614, June 1, 1998, effective
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
![](asset-b3.png)
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.
(c) Payment of the international filing fee (PCT
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
(c) of this section is not timely made in accordance
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.
(c) and (d) revised, 63 FR 29614, June 1, 1998, effective
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
![](asset-b4.png)
§ 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
(c) An indication that the international
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.).
(c) Other physical requirements for international
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.
(c) All information, for example, addresses,
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
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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
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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.
(c) Refund of the supplemental search fees will
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]
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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).
(c) If a certified copy of the priority document
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.
(c) If the applicant makes a request for early
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
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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.
(c) The United States Receiving Office will not
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.
(c) Powers of attorney and revocations thereof
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]
(c) No copy of an international application may
be transmitted to the International Bureau, a foreign
Designated Office, or other foreign authority by the
United States Receiving Office or the applicant,
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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.
(c) When corrections under PCT Art. 11(2), Art.
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.
(c) Corrections or additions to the Request of
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]
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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.
(c) If an application contains claims to more or
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.
(c) In the case of non-compliance with unity of
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]
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§ 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.
(c) An applicant who desires that a copy of the
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.”
(c) Withdrawal of a proper Demand prior to the
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
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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.
(c) Late furnishing fee for providing a sequence
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.
(c) added, 82 FR 52780, Nov. 14, 2017, effective Jan.
16, 2018]
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§ 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.
(c) No international preliminary examination
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]
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§ 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.
(c) 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 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.
(c) An applicant who desires that a copy of the
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).
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(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.
(c) An international application fulfills the
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
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By other than a small or micro
entity.............................................................660.00
(c) The examination 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) 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
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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
(c) revised, 63 FR 29614, June 1, 1998, effective, July
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);
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(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.
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(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
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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),
(c) and (e) and identifies the person executing the
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).
(c) If an oath or declaration under § 1.63, or
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,
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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.
(c) Subject to paragraph (f) of this section, if
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
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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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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.
(c) Reexamination pending: If a reexamination
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
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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.
(c) If the request does not include the fee for
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).
(c) The 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 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]
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§ 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.
(c) Any statement filed by the patent owner shall
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
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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
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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.
(c) The time for taking any action by a patent
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
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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;
or
(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
(c) of this section to extend the period for response
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.
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(c) Issues other than those indicated in
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.
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(c) 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 §
1.552(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.
(c) If ex parte reexamination is ordered while
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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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.
(c) The ex parte reexamination certificate will
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.
(c) A request for supplemental examination of
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]
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§ 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.
(c) An item of information must be in writing
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.
(c) The request may also include:
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(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.
(c) If an unauthorized or otherwise improper
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.
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(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.
(c) If the supplemental examination certificate
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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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
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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;
or
(5) Any delay in the processing of the
application by the Office that was requested by the
applicant.
(c) Delays caused by interference and
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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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;
or
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(5) Any delay in the processing of the
application by the Office that was requested by the
applicant.
(c) Delays caused by interference and
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;
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(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.
(c) The period of adjustment under § 1.702(c)
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;
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(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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thru 2013-03-31)
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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
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(c) Circumstances that constitute a failure of the
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:
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.704
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(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;
or
(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
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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).]
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§ 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. ]
*****
(c) Circumstances that constitute a failure of the
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. ]
*****
(c) *****
(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
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*****
(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*]
*****
(c) *****
*****
(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.
(c) Any request for 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 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
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(pre-2012-09-17)
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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.
(c) Any application for patent term adjustment
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
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(pre-2013-04-01)
CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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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;
(c) An application for extension is submitted in
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
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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.
(c) If the application is submitted on behalf of
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
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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
(C) The date on which the NDA was
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
(C) The date on which the NADA
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
(C) The date the license issued;
(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
(C) The date on which the FDA
published a Federal Register notice listing the
additive for use;
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(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
(C) The date on which the application
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).
(c) If an application for extension of patent term
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
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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
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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.
(c) No patent will be determined eligible for
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.
(c) The length of the regulatory review period
for a human drug, antibiotic drug or human
biological product will be determined by the
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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
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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.
(c) The length of the regulatory review period
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
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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.
(c) The length of the regulatory review period
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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(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.
(c) The length of the regulatory review period
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;
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(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.
(c) The length of the regulatory review period
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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(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 (§
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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.
(c) If an application for extension is filed which
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.
(c) The content of each subsequent interim
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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§ 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.
(c) The reference to a biological material in a
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;
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(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.
(c) A depository having status under paragraph
(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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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
(c) of this section.
(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.
(c) A request for a certificate of correction under
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
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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.
(c) If a viability test indicates that the deposit
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.
(c) Upon request made to the Office, the Office
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]
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§ 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.
(c) If an application for patent is otherwise in
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:
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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.
(c) Patent applications which contain disclosures
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)
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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.
(c) Format representation of nucleotides.
(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
1.
(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.
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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
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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>
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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>
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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
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(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).
(c) Computer readable form files submitted may
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.”
(c) Any appropriate amendments to the
“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]
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January 2018R-249
§ 1.825CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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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
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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.
(c) Issues other than those indicated in
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.
(c) If a final decision in an inter partes
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
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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.
(c) If an inter partes 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.
(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.
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(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]
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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.
(c) All communications between the Office and
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]
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§ 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.
(c) Appellant’s briefs filed by the patent owner
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
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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.
(c) The Right of Appeal Notice shall be a final
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]
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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.
(c) If claims are found patentable and the patent
owner fails to file a timely and appropriate response
to any Office action in an inter partes reexamination
proceeding, further prosecution will be limited to
the claims found patentable at 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]
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§ 1.958CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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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.
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(c) If the patent owner has filed a notice of
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
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§ 1.989CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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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]
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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.
(c) The certificate will be sent to the patent
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”;
(c) Rule as used in this subpart, when
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,
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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)).
(c) Optional contents. The international design
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
![](asset-109.png)
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.
(c) The following fees required by the
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
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(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);
or
(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]
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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.
(c) Once transmittal of the international design
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
![](asset-10c.png)
(c) Reply. The reply required may be:
(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.
(c) A petition under this section will not be
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.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 1.1052
![](asset-10d.png)
(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;
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(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.
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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
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patents or patent applications required by Executive
Order 9424 to be filed will be recorded as provided
in this part.
(c) A joint research agreement or an excerpt of
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,
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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).
(c) All documents.(1) For electronic
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:
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(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.
(c) Each patent cover sheet required by § 3.28
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.
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(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,
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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
Register to record governmental interests required
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]
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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.
(c) Patents—Becoming of record. An assignee
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
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(c) Patents — Becoming of record. An assignee
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,
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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.
(c) For patent matters only:
(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
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[*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.
(c) Partial assignees. (1) If one or more
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—
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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.
(c) Contract 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.
(c) The complaint should fairly summarize the
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]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 4.5
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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.
(c) Patent applications and documents relating
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
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Trademark Office, but directly to the department or
agency which caused the secrecy order to be issued.
(c) An application disclosing any significant
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.
(c) When the national application is found to be
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.
(c) The petition must identify any contract
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.
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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.
(c) In a petition for modification of a secrecy
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;
or
(2) No application on the invention has been
filed in the United States.
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(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).
(c) Where technical data in the form of a patent
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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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.
(c) Where the application to be filed or exported
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:
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(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.
(c) A license granted under § 5.12(b) pursuant
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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§ 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
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(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.
(c) If a petition for a retroactive license is
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]
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Index I — RULES RELATING TO
PATENTS
A
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
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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
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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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
B
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
C
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)
Copyright notice in specification .............. 1.71(d)
Copyright notice on drawings .................... 1.84(s)
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)
D
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)
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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
Copyright notice .................................. 1.84(s)
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
E
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
F
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
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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
G
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
H
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
I
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
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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.)
J
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
L
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
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List of U.S. patents classified in a subclass, cost
of .............................................................. 1.19(d)
Lost files ...................................................... 1.251
M
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)
N
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
O
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)
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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
P
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
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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
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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)
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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
R
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
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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)
Register of Government interest in patents.... 3.58
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
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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
S
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
Copyright notice .................................. 1.71(d)
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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
T
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
U
Unintentional abandonment .................... 1.137(b)
United States as
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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)
W
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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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.
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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
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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.
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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
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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]
(c) Petition to OED Director regarding
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
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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).
(c) Foreigners. Any foreigner not a resident of
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
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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,
(C) Satisfactory proof of scientific
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
(C) For aliens, provide proof that
recognition is not inconsistent with the terms of their
visa or entry into the United States; and
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(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.
(c) Each individual seeking registration is
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
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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
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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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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.
(C) An individual who was not only
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
(C) The finding of lack of good moral
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;
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(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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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.
(c) An individual who does not comply with the
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.
(c) An individual not registered under § 11.6
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,
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(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.
(C) Role of official responsibility in
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
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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.
(C) Duty to inquire. In order for a
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.
(c) Former employees of the Office. This
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
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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
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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).
(c) Administrative Inactivation.
(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
register as may be appropriate provided that 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
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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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(c) Foreigners. Any foreign attorney or agent
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
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benefit to the public or the law students participating
in the law school’s clinic.
(c) Faculty Clinic Supervisor. Any law school
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:
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(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
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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.
(c) Inactivation of law schools participating in
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,
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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.
(c) Violations of any of paragraphs (b)(2)(i)
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
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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.
(c) Petitions to disqualify a practitioner in ex
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.
(c) Transfer to disability inactive status. The
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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§ 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.
(c) [Reserved]
(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;
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(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.
(c) No discovery shall be authorized of, and no
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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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.
(c) Effect of stay in another jurisdiction. In the
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,
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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.
(c) Proof of conviction and guilt—(1)
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
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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
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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.
(c) When an affidavit under paragraph (a) of
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;
(C) A statement that the practitioner
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;
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(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
(C) Affidavits, medical reports,
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.
(c) Contents of motion for reactivation. A
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 ]
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§ 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.
(c) Effect of stay of transfer, judicially declared
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
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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
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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:
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(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.
(c) The complaint shall be filed in the manner
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.
(c) If the respondent is known to the OED
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]
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§ 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.
(c) Content. The respondent shall include in
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.
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(c) Responsibilities. The hearing officer shall
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,
or
(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
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§ 11.40CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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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.
(c) A respondent shall serve on the
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
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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.
(c) A hearing under this section will not be open
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.
(c) Government documents. Official documents,
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.
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(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.
(c) The hearing officer may deny discovery
requested under paragraph (a) of this section if the
discovery sought:
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(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
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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.
(c) All briefs shall:
(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.
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(c) The respondent or the OED Director may
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
(c) of this section;
(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
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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.
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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.
(c) An excluded, suspended or resigned
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
(C) Any witness or potential witness
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
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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.
(c) Access to records of exclusion by consent.
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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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.
(c) Review of reinstatement petition. An
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
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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]
(c) A practitioner may limit the scope of the
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
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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.
(c) A fee may be contingent on the outcome of
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.
(c) 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]
§ 11.107 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]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 11.106
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§ 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.
(c) A practitioner shall not solicit any substantial
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
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(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.
(c) A practitioner who has formerly represented
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
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(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.
(c) A disqualification prescribed by this section
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.
(c) If a practitioner is disqualified by paragraph
(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.
(c) Except as provided in paragraph (d) of this
section, if
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§ 11.113CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
![](asset-16c.png)
(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.
(c) Information relating to the representation of
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.
(c) A practitioner shall deposit into a client trust
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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(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.
(c) A practitioner must comply with applicable
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.
(c) A practitioner subject to paragraph (b) of
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
(c) of this section, representation is permissible if:
(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
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§ 11.203CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
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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.
(c) Except as disclosure is authorized in
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;
or
(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.
(c) The duties stated in paragraphs (a) and (b)
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
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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;
(c) Knowingly disobey an obligation under the
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
(c) [Reserved]
(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
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(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.
(c) Notwithstanding paragraph (a) of this
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.
(c) A practitioner shall be responsible for
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
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[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
(c) A practitioner shall be responsible for
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.
(c) A practitioner shall not permit a person who
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
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§ 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.
(c) Any communication made pursuant to this
section shall include the name and office address of
January 2018R-373
§ 11.702CONSOLIDATED PATENT RULES - JANUARY 2018 UPDATE
![](asset-176.png)
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.
(c) Every written, recorded or electronic
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.
(c) [Reserved]
(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]
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(c) The name of a practitioner holding a public
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.
(c) The provisions of this section do not require
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;
(c) Engage in conduct involving dishonesty,
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]
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Index II — RULES RELATING TO
REPRESENTATION OF OTHERS
BEFORE THE UNITED STATES
PATENT AND TRADEMARK
OFFICE
A
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
B
Breach of trust ............................................ 11.7(h)
Business transactions or relations with
client .................................................... 11.108(a)
C
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
D
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
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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)
E
Excessive legal fees ................................ 11.105(a)
F
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)
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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
G
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
I
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
J
Judicial office, candidate for ...................... 11.802
L
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
M
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
N
Non-practitioner assistance,
responsibilities .......................................... 11.503
O
Oath requirement ............................................ 11.8
Organization as client ................................ 11.113
P
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:
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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
R
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
Register of attorneys and agents in patent
cases ........................................................ 11.5
Registration fee .................................... 1.21(a)
Registration number ................................ 1.34
Removal of attorneys and agents from the
register .................................................. 11.11
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
S
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
T
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
U
Unauthorized practice ................................ 11.505
Unrepresented persons, dealing with .......... 11.403
V
Violating duty of candor ............................ 11.303
Violation of disciplinary rule, misconduct... 11.804
W
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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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
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inexpensive resolution of every proceeding before
the Board.
(c) Decorum. Each party must act with courtesy
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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(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).
(c) Petition fee. The fee set in § 41.20(a) must
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.
(c) Scope. This section governs all proceedings
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.
(c) Withdrawal. Counsel may not withdraw
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]
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§ 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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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.
(c) Trial Proceedings. Correspondence in trial
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.
(c) Citations to authority must include pinpoint
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
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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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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.
(c) An appeal, when taken, is presumed to be
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.
(c) All other amendments 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).
(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
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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,
or
(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)).
(c) Remand ordered by the Director. Prior to
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.
(c) Content of appeal brief.
(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.
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(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]
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§ 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.
(c) 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, 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.
(c) Petition not granted and appeal maintained.
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
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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.
(c) 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, 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.
(c) 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, 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
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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.
(c) If no request and fee for oral hearing have
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
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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.
(c) Review of undesignated new ground of
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.
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(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
D.
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
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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.
(c) The notice of appeal or cross appeal in the
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).
(c) Affidavits or other evidence filed after the
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.
(c) Prior to the entry of a decision on the appeal
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.
(c) The examiner will consider both the
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
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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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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
(c) 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 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.
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(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.
(c) If a respondent brief is filed which does not
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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(b) An examiner’s answer may not include a
new ground of rejection.
(c) An examiner’s answer may not include a
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.
(c) If no request and fee for oral hearing have
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
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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.
(c) Where the owner has filed a response
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
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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
(c) of this section and issue a determination that the
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.
(c) Within one month of the date of service of
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
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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.
(c) Times set in this subpart are defaults. In the
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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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).
(c) Working copy. Every paper filed must be
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
![](asset-194.png)
(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.
(c) A party must promptly notify the Board of
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.
(c) Missing or incomplete copies. If a party
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.
(c) Any motion to add or amend a claim must
include:
(1) A clean copy of the claim,
(2) A claim chart showing where the
disclosure of the patent or application provides
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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.
(c) 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, 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.
(c) Content of motions; oppositions and replies.
(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.
(c) Exhibits. Each exhibit must be filed and
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.
(c) Length of argument. If a request for oral
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.122
issue will govern further proceedings in the
contested case.
(c) Rehearing—(1) Time for request. A request
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.
(c) The parties are solely responsible for the
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.
(c) Recommendation. The judgment may
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.
(c) Additional discovery. (1) A party may
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.
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MANUAL OF PATENT EXAMINING PROCEDURE§ 41.128
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(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.
(c) Modifications in terminology. Unless
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
![](asset-19a.png)
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.
(c) Motion to exclude. A miscellaneous motion
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
![](asset-19b.png)
(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.
(c) Notice of deposition. (1) Prior to the taking
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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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.
(c) Patent interferences shall be administered
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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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.
(c) Examiner. An examiner may require an
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
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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.
(c) Redeclaration. An administrative patent
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.
(c) Filing and service. The Board will set the
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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§ 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.
(c) Request to keep separate. Any party to an
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.
(c) Cross-applicability of prior art. When a
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.
(c) Showing patentability. (1) A party moving
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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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.
(c) Decorum. Every party must act with
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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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.
(c) The Board may authorize additional 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 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
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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.
(c) Times.
(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.
(c) Exhibits. Each exhibit must be filed with
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
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(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
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§ 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.
(c) The Board may recognize counsel pro hac
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.
(c) Representations to the Board. By presenting
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.
(c) Citations to authority must include pinpoint
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.
(c) On the filing of a petition for a derivation
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.
(c) Burden of proof. The moving party has the
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.
(c) Effect. If a notice under paragraph (a) of
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
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(c) Statement of material facts. Each petition
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.
(c) Replies. The following word counts or page
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.
(c) Production of documents. Except as
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
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§ 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.
(c) Duration.
(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
![](asset-1ab.png)
(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;
(C) A list of the exhibits to be relied
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.
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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.
(c) Scope of coverage. USPTO patent
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.
(c) Specification and drawings. A specification
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
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§ 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.
(c) Modifications in terminology. Unless
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.
(c) Exhibit numbering. Each party’s exhibits
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
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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.
(c) Motion to exclude. A motion 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. 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.
(c) Petition decisions. A decision by the Board
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
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(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.
(c) Recommendation. The judgment may
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.
(c) Request to keep separate. A party to a
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.72
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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.
(c) An inter partes review 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.
[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
(c) 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.
[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
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(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.
(c) A motion may be filed that seeks to correct
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;]
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.103
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§ 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.
(c) [Reserved]
(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.
(c) Sufficient grounds. Inter partes review shall
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
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(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.
(c) Additional motion to amend. In addition to
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
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of the supplemental information would be in the
interests-of-justice.
(c) Other supplemental information. A party
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.
(c) A post-grant review 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) 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
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(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.
(c) A motion may be filed that seeks to correct
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
![](asset-1b7.png)
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.
(c) [Reserved]
(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
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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.
(c) Sufficient grounds. Post-grant review shall
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.
(c) Additional motion to amend. In addition to
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.
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(c) Other supplemental information. A party
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:
(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.
(c) A covered business method patent review
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
D:
(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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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.
(c) A petitioner may not file a petition to
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
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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.
(c) A motion may be filed that seeks to correct
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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(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.
(c) Sufficiency of showing. A derivation
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
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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.
(c) The parties are solely responsible for the
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 42.409
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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).
(c) For a civil action under 35 U.S.C. 146. The
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
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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).
(c) Extension of time.
(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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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.
(c) USPTO maintains and makes available for
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
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(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.
(c) USPTO officials may, upon request, create
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
![](asset-1c3.png)
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.
(c) Notice of referral. Whenever a FOIA
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.
(c) Unusual circumstances.
(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
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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
![](asset-1c5.png)
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.
(c) Designation of business information. A
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
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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;
or
(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.
(c) If an appeal is granted, the person making
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”
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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.
(c) Fees. In responding to FOIA requests, the
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,
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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.
(c) Matters outside the scope of this subpart
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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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.
(c) Any inquiry which is not addressed as
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
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(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.
(c) If the request follows an inquiry under §
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.24
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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
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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.
(c) Access to medical records is governed by
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;
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(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.
(c) In every case of a request by an individual
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
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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.
(c) Since the request, in all cases, will follow a
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.27
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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;
(C) The reasons for 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.
(c) The following criteria will be considered by
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:
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(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.
(c) The individual’s appeal shall include a
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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 102.29
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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.
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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.
(c) The Privacy Officer shall make an
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.
(c) As required by the United States Office of
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
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§ 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;
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(C) Litigation, Claims and
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
(C) Litigation, Claims, 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.
(c) At the present time, USPTO claims no
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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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.
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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.
(c) The Office of the General Counsel may be
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.
(c) This subpart does not apply to subpoenas,
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.
(c) Any employee receiving a summons and
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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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
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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).
(c) If an employee is unaware of the regulations
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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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.
(c) Interim order means an order issued by the
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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(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.
(c) After the Director receives the request of a
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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