
[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2001]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR1]

[Page 12-36]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
          CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE,
                         DEPARTMENT OF COMMERCE
 
PART 1--RULES OF PRACTICE IN PATENT CASES--Table of Contents
 
Subpart A--General Provisions

                 General Information and Correspondence

Sec. 1.1  Addresses for correspondence with the Patent and Trademark 
          Office.

    (a) Except for Sec. 1.1(a)(3) (i) and (ii), all correspondence 
intended for the Patent and Trademark Office must be addressed to either 
``Commissioner of Patents and Trademarks, Washington, DC 20231'' or to 
specific areas within the Office as set out in paragraphs (a) (1), (2) 
and (3)(iii) of this section. When appropriate, correspondence should 
also be marked for the attention of a particular office or individual.
    (1) Patent correspondence. All correspondence concerning patent 
matters processed by organizations reporting to the Assistant 
Commissioner for Patents should be addressed to ``Assistant Commissioner 
for Patents, Washington, DC 20231.''
    (2) Trademark correspondence. (i) Send all trademark filings and 
correspondence, except as specified below or unless submitting 
electronically, to: Assistant Commissioner for Trademarks, 2900 Crystal 
Drive, Arlington, Virginia 22202-3513.
    (ii) Send trademark-related documents for the Assignment Division to 
record to: Commissioner of Patents and Trademarks, Box Assignment, 
Washington, DC 20231.
    (iii) Send requests for certified or uncertified copies of trademark 
applications and registrations, other than coupon orders for uncertified 
copies of registrations, to: Commissioner of Patents and Trademarks, Box 
10, Washington, DC 20231.
    (iv) Send requests for coupon orders for uncertified copies of 
registrations to: Commissioner of Patents and Trademarks, Box 9, 
Washington, DC 20231.
    (v) An applicant may transmit an application for trademark 
registration electronically, but only if the applicant uses the Patent 
and Trademark Office's electronic form.
    (3) Office of Solicitor correspondence. (i) Correspondence relating 
to pending litigation required by court rule or order to be served on 
the Solicitor shall be hand-delivered to the Office of the Solicitor or 
shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington, 
Virginia 22215; or such other address as may be designated in writing in 
the litigation. See Secs. 1.302(c) and 2.145(b)(3) for filing a notice 
of appeal to the U.S. Court of Appeals for the Federal Circuit.
    (ii) Correspondence relating to disciplinary proceedings pending 
before an Administrative Law Judge or the Commissioner shall be mailed 
to: Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
    (iii) All other correspondence to the Office of the Solicitor shall 
be addressed to: Box 8, Commissioner of Patents and Trademarks, 
Washington, DC 20231.
    (iv) Correspondence improperly addressed to a Post Office Box 
specified in paragraphs (a)(3) (i) and (ii) of this section will not be 
filed elsewhere in the Patent and Trademark Office, and may be returned.
    (b) 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 ``Box PCT.''

[[Page 13]]

    (c) Requests for reexamination should be additionally marked ``Box 
Reexam.''
    (d) Payments of maintenance fees in patents and other communications 
relating thereto should be additionally marked ``Box M. Fee.''
    (e) Communications relating to interferences and applications or 
patents involved in an interference should be additionally marked ``BOX 
INTERFERENCE.''
    (f) All applications for extension of patent term and any 
communications relating thereto intended for the Patent and Trademark 
Office should be additionally marked ``Box Patent Ext.'' When 
appropriate, the communication should also be marked to the attention of 
a particular individual, as where a decision has been rendered.
    (g) [Reserved]
    (h) In applications under section 1(b) of the Trademark Act, 15 
U.S.C. 1051(b), all statements of use filed under section 1(d) of the 
Act, and requests for extensions of time therefor, should be 
additionally marked ``Box ITU.''
    (i) The filing of all provisional applications and any 
communications relating thereto should be additionally marked ``Box 
Provisional Patent Application.''
    Note: Sections 1.1 to 1.26 are applicable to trademark cases as well 
as to national and international patent cases except for provisions 
specifically directed to patent cases. See Sec. 1.9 for definitions of 
``national application'' and ``international application.''

(Pub. L. 94-131, 89 Stat. 685)

[46 FR 29181, May 29, 1981, as amended at 49 FR 34724, Aug. 31, 1984; 49 
FR 48451, Dec. 12, 1984; 52 FR 9394, Mar. 24, 1987; 53 FR 16413, May 9, 
1988; 54 FR 37588, Sept. 11, 1989; 60 FR 20220, Apr. 25, 1995; 61 FR 
56446, Nov. 1, 1996; 64 FR 48917, Sept. 8, 1999]

Sec. 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.

Sec. 1.3  Business to be conducted with decorum and courtesy.

    Applicants and their attorneys or agents are required to conduct 
their business with the Patent and Trademark Office with decorum and 
courtesy. Papers presented in violation of this requirement will be 
submitted to the Commissioner and will be returned by the Commissioner's 
direct order. Complaints against examiners and other employees must be 
made in correspondence separate from other papers.

[61 FR 56446, Nov. 1, 1996]

Sec. 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 or trademark 
registrations, 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, Secs. 1.31 to 1.378; of international applications in subpart 
C, Secs. 1.401 to 1.499; of ex parte reexaminations of patents in 
subpart D, Secs. 1.501 to 1.570; of interferences in subpart E, 
Secs. 1.601 to 1.690; of extension of patent term in subpart F, 
Secs. 1.710 to 1.785; of inter partes reexaminations of patents in 
subpart H, Secs. 1.902 to 1.997; and of trademark applications 
Secs. 2.11 to 2.189.
    (b) Since each file must be complete in itself, a separate copy of 
every paper to be filed in a patent or trademark application, patent 
file, trademark registration 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

[[Page 14]]

file of an application, patent, trademark registration file, 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, trademark registration file, or other proceeding.
    (c) Since different matters may be considered by different branches 
or sections of the United States Patent and Trademark Office, each 
distinct subject, inquiry or order must be contained in a separate paper 
to avoid confusion and delay in answering papers dealing with different 
subjects.
    (d)(1) Each piece of correspondence, except as provided in 
paragraphs (e) and (f) of this section, filed in an application, patent 
file, trademark registration file, or other proceeding in the Office 
which requires a person's signature, must:
    (i) Be an original, that is, have an original signature personally 
signed in permanent ink by that person; or
    (ii) Be a direct or indirect copy, such as a photocopy or facsimile 
transmission(Sec. 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; or
    (iii) Where an electronically transmitted trademark filing is 
permitted, the person who signs the filing must either:
    (A) Place a symbol comprised of numbers and/or letters between two 
forward slash marks in the signature block on the electronic submission; 
and print, sign and date in permanent ink, and maintain a paper copy of 
the electronic submission; or
    (B) Sign the verified statement using some other form of electronic 
signature specified by the Commissioner.
    (2) 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 
Sec. 10.18(b) of this chapter. Violations of Sec. 10.18(b)(2) of this 
chapter by a party, whether a practitioner or non-practitioner, may 
result in the imposition of sanctions under Sec. 10.18(c) of this 
chapter. Any practitioner violating Sec. 10.18(b) may also be subject to 
disciplinary action. See Secs. 10.18(d) and 10.23(c)(15).
    (e) 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 must be submitted with an original signature 
personally signed in permanent ink by that person.
    (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.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2707, Jan. 20, 1982; 49 
FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 1988; 58 FR 54501, Oct. 
22, 1993; 62 FR 53180, Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999; 65 FR 
54656, Sept. 8, 2000; 66 FR 76772, Dec. 7, 2000]

Sec. 1.5  Identification of application, patent or registration.

    (a) No correspondence relating to an application should be filed 
prior to receipt of the application number from the Patent and Trademark 
Office. When a letter 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),

[[Page 15]]

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. Any correspondence not containing such 
identification will be returned to the sender where a return address is 
available. The returned correspondence will be accompanied by 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 mailing 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 Sec. 1.8 or the Express Mail procedure under Sec. 1.10 
for resubmissions of returned correspondence if they desire to have the 
benefit of the date of deposit with 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 letters directed to the Patent and 
Trademark Office concerning applications for patents should also state 
the name of the applicant, 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 letter 
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 Sec. 1.366(c).
    (c)(1) A letter about a trademark application should identify the 
serial number, the name of the applicant, and the mark.
    (2) A letter about a registered trademark should identify the 
registration number, the name of the registrant, and the mark.
    (d) A letter relating to a reexamination proceeding should identify 
it as such by the number of the patent undergoing reexamination, the 
reexamination request control number assigned to such proceeding and, if 
known, the group art unit and name of the examiner to which it has been 
assigned.
    (e) When a paper concerns an interference, it should state the names 
of the parties and the number of the interference. The name of the 
examiner-in-chief assigned to the interference (Sec. 1.610) and the name 
of the party filing the paper should appear conspicuously on the first 
page of the paper.
    (f) When a paper concerns a provisional application, it should 
identify the application as such and include the application number.


(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)

[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29181, May 29, 1981; 49 
FR 552, Jan. 4, 1984; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 
1988; 58 FR 54501, Oct. 22, 1993;61 FR 42802, Aug. 19, 1996; 61 FR 
56446, Nov. 1, 1996; 64 FR 48917, Sept. 8, 1999]

Sec. 1.6  Receipt of correspondence.

    (a) Date of receipt and Express Mail 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 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 Sec. 1.10 will be 
stamped with the date of deposit as ``Express Mail'' with the United 
States Postal Service.
    (3) Correspondence transmitted by facsimile to the Patent and 
Trademark Office will be stamped with the date on

[[Page 16]]

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) Trademark-related correspondence transmitted electronically will 
be stamped with the date on which the Office receives the transmission.
    (b) Patent and Trademark Office Post Office pouch. Mail placed in 
the Patent and Trademark Office pouch up to midnight on any day, except 
Saturdays, Sundays and Federal holidays within the District of Columbia, 
by the post office at Washington, DC, serving the Patent and Trademark 
Office, is considered as having been received in the Patent and 
Trademark Office on the day it was so placed in the pouch by the U.S. 
Postal Service.
    (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 Patent and Trademark Office, unless that date is a 
Saturday, Sunday, or Federal holiday within the District of Columbia. 
See Sec. 1.6(a)(3). To facilitate proper processing, each transmission 
session should be limited to correspondence to be filed in a single 
application or other proceeding before the Patent and Trademark Office. 
The application number of a patent or trademark application, the control 
number of a reexamination proceeding, the interference number of an 
interference proceeding, the patent number of a patent, or the 
registration number of a trademark 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 Sec. 1.4(e), requiring an 
original signature;
    (2) Certified documents as specified in Sec. 1.4(f);
    (3) Correspondence which cannot receive the benefit of the 
certificate of mailing or transmission as specified in Sec. 1.8(a)(2)(i) 
(A) through (D) and (F), Sec. 1.8(a)(2)(ii)(A), and 
Sec. 1.8(a)(2)(iii)(A), except that a continued prosecution application 
under Sec. 1.53(d) may be transmitted to the Office by facsimile;
    (4) Drawings submitted under Secs. 1.81, 1.83 through 1.85, 1.152, 
1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
    (5) A request for reexamination under Sec. 1.510 or Sec. 1.913;
    (6) Correspondence to be filed in a patent application subject to a 
secrecy order under Secs. 5.1 through 5.5 of this chapter and directly 
related to the secrecy order content of the application;
    (7) Requests for cancellation or amendment of a registration under 
section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates 
of registration surrendered for cancellation or amendment under section 
7(e) of the Trademark Act, 15 U.S.C. 1057(e);
    (8) Correspondence to be filed with the Trademark Trial and Appeal 
Board, except the notice of ex parte appeal;
    (9) Correspondence to be filed in an interference proceeding which 
consists of a preliminary statement under Sec. 1.621; a transcript of a 
deposition under Sec. 1.676 or of interrogatories, or cross-
interrogatories; or an evidentiary record and exhibits under Sec. 1.653.
    (e) Interruptions in U.S. Postal Service. If interruptions or 
emergencies in the United States Postal Service which have been so 
designated by the Commissioner occur, the Patent and Trademark Office 
will consider as filed on a particular date in the Office any 
correspondence which is:
    (1) Promptly filed after the ending of the designated interruption 
or emergency; and
    (2) Accompanied by a statement indicating that such correspondence 
would have been filed on that particular date if it were not for the 
designated interruption or emergency in the United States Postal 
Service.
    (f) Facsimile transmission of a patent application under 
Sec. 1.53(d). In the event

[[Page 17]]

that the Office has no evidence of receipt of an application under 
Sec. 1.53(d) (a continued prosecution application) transmitted to the 
Office by facsimile transmission, the party who transmitted the 
application under Sec. 1.53(d) may petition the Commissioner to accord 
the application under Sec. 1.53(d) a filing date as of the date the 
application under Sec. 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 
Sec. 1.53(d):
    (i) Informs the Office of the previous transmission of the 
application under Sec. 1.53(d) promptly after becoming aware that the 
Office has no evidence of receipt of the application under Sec. 1.53(d);
    (ii) Supplies an additional copy of the previously transmitted 
application under Sec. 1.53(d); and
    (iii) Includes a statement which attests on a personal knowledge 
basis or to the satisfaction of the Commissioner to the previous 
transmission of the application under Sec. 1.53(d) and is accompanied by 
a copy of the sending unit's report confirming transmission of the 
application under Sec. 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 Sec. 1.53(d).
    (2) The Office may require additional evidence to determine if the 
application under Sec. 1.53(d) was transmitted to and received in the 
Office on the date in question.

[58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56447, 
Nov. 1, 1996; 62 FR 53180, Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999; 65 
FR 54657, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000]

Sec. 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 
Sec. 1.304 for time for appeal or for commencing civil action.
    (b) If the day that is twelve months after the filing date of a 
provisional application under 35 U.S.C. 111(b) and Sec. 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.

[65 FR 14871, Mar. 20, 2000]

Sec. 1.8  Certificate of mailing or transmission.

    (a) Except in the cases enumerated in paragraph (a)(2) of this 
section, correspondence required to be filed in the 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 Sec. 1.1(a) and deposited with the U.S. 
Postal Service with sufficient postage as first class mail; or
    (B) Transmitted by facsimile to the Patent and Trademark Office in 
accordance with Sec. 1.6(d); 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

[[Page 18]]

obtaining an application filing date, including a request for a 
continued prosecution application under Sec. 1.53(d);
    (B) The filing of correspondence in an interference which an 
examiner-in-chief orders to be filed by hand or ``Express Mail'';
    (C) The filing of agreements between parties to an interference 
under 35 U.S.C. 135(c);
    (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 Sec. 1.494(b) or Sec. 1.495(b).
    (ii) Relative to Trademark Registrations and Trademark 
Applications--
    (A) The filing of a trademark application.
    (B)-(F) [Reserved]
    (iii) Relative to Disciplinary Proceedings--
    (A) Correspondence filed in connection with a disciplinary 
proceeding under part 10 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 
section, but not received in the Patent and Trademark Office, and the 
application is held to be abandoned or the proceeding is dismissed, 
terminated, or decided with prejudice, 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 which attests on a personal knowledge basis 
or to the satisfaction of the Commissioner to the previous timely 
mailing or transmission. 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.
    (c) The Office may require additional evidence to determine if the 
correspondence was timely filed.

[58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993, as amended at 61 
FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997]

Sec. 1.9  Definitions.

    (a)(1) A national application as used in this chapter means a U.S. 
application for patent which was either filed in the Office under 35 
U.S.C. 111, or which entered the national stage from an international 
application after compliance with 35 U.S.C. 371.
    (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 a 
U.S. national application for patent which was either filed in the 
Office under 35 U.S.C. 111(a), or which entered the national stage from 
an international application after compliance with 35 U.S.C. 371.
    (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)-(f)  [Reserved]
    (g) For definitions in interferences see Sec. 1.601.
    (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

[[Page 19]]

and, in fact, properly classified pursuant to such Act of Congress or 
Executive Order.

(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 
1113, 1123)

[43 FR 20461, May 11, 1978, as amended at 47 FR 40139, Sept. 10, 1982; 
47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220, 
Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997; 65 
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000]

Sec. 1.10  Filing of correspondence by ``Express Mail.''

    (a) Any correspondence received by the Patent and Trademark Office 
(Office) that was delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) will be 
considered filed in the Office on the date of deposit with the USPS. The 
date of deposit with the USPS is shown by the ``date-in'' on the 
``Express Mail'' mailing label or other official USPS notation. If the 
USPS deposit date cannot be determined, the correspondence will be 
accorded the Office receipt date as the filing date. See Sec. 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 ``Express Mail'' mailing label with the 
``date-in'' clearly marked. Persons dealing indirectly with the 
employees of the USPS (such as by deposit in an ``Express Mail'' drop 
box) do so at the risk of not receiving a copy of the ``Express Mail'' 
mailing label with the desired ``date-in'' clearly marked. The paper(s) 
or fee(s) that constitute the correspondence should also include the 
``Express Mail'' 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 ``Express Mail 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-in'' on 
the ``Express Mail'' mailing label or other official USPS notation, may 
petition the Commissioner to accord the correspondence a filing date as 
of the ``date-in'' on the ``Express Mail'' 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 ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail;'' and
    (3) The petition includes a true copy of the ``Express Mail'' 
mailing label showing the ``date-in,'' 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 ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that the ``date-in'' on 
the ``Express Mail'' mailing label or other official notation entered by 
the USPS was incorrectly entered or omitted by the USPS, may petition 
the Commissioner 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 ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail''; and
    (3) The petition includes a showing which establishes, to the 
satisfaction of the Commissioner, that the requested filing date was the 
date the correspondence was deposited in the ``Express Mail 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 ``Express Mail 
Post Office to Addressee'' service of the USPS.

[[Page 20]]

    (e) Any person mailing correspondence addressed as set out in 
Sec. 1.1(a) to the Office with sufficient postage utilizing the 
``Express Mail Post Office to Addressee'' service of the USPS but not 
received by the Office, may petition the Commissioner 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 ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail'';
    (3) The petition includes a copy of the originally deposited 
paper(s) or fee(s) that constitute the correspondence showing the number 
of the ``Express Mail'' mailing label thereon, a copy of any returned 
postcard receipt, a copy of the ``Express Mail'' mailing label showing 
the ``date-in,'' 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-in'' on the ``Express Mail'' 
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 ``Express Mail 
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 Commissioner, the original deposit of the 
correspondence and that the copies of the correspondence, the copy of 
the ``Express Mail'' 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 ``Express Mail'' 
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 ``Express Mail'' with the USPS on the 
date in question.

[61 FR 56447, Nov. 1, 1996 as amended at 62 FR 53181, Oct. 10, 1997]

          Records and Files of the Patent and Trademark Office

Sec. 1.11  Files open to the public.

    (a) The specification, drawings, and all papers relating to the file 
of an abandoned published application, except if a redacted copy of the 
application was used for the patent application publication, 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 Sec. 1.19(b)(2). See Sec. 2.27 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 Sec. 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 the fee under 
Sec. 1.20(c) has been paid, will be announced in the Official Gazette. 
Any reexaminations at the initiative of the Commissioner pursuant to 
Sec. 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 Commissioner 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 to inspection by the general public, and 
copies may be furnished upon paying the fee therefor.

[[Page 21]]

    (e) The file of any interference involving a patent, a statutory 
invention registration, a reissue application, or an application on 
which a patent has been issued or which has been published as a 
statutory invention registration, is open to inspection by the public, 
and copies may be obtained upon paying the fee therefor, if:
    (1) The interference has terminated or
    (2) An award of priority or judgment has been entered as to all 
parties and all counts.


(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[46 FR 29181, May 29, 1981, as amended at 47 FR 41272, Sept. 17, 1982; 
50 FR 9378, Mar. 7, 1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181, Oct. 
10, 1997; 65 FR 57051, Sept. 20, 2000]

Sec. 1.12  Assignment records open to public inspection.

    (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), 
published patent applications, and assignment records relating to 
pending or abandoned trademark applications and to trademark 
registrations (for assignments recorded on or after January 1, 1955), 
are open to public inspection at the United States Patent and Trademark 
Office, and copies of those assignment records may be obtained upon 
request and payment of the fee set forth in Sec. 1.19 and Sec. 2.6 of 
this chapter.
    (2) All records of assignments of patents recorded before May 1, 
1957, and all records of trademark assignments recorded before January 
1, 1955, 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 has not been published under 35 
U.S.C. 122(b) are not available to the public. Copies of any such 
assignment records and related information shall be obtainable only upon 
written authority of the applicant or applicant's assignee or attorney 
or 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 Sec. 1.14, or any information with respect 
thereto, must:
    (1) Be in the form of a petition including the fee set forth in 
Sec. 1.17(h); 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 Sec. 1.21(j) will be 
made for the time consumed in making a search for such assignment.


(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41272, Sept. 17, 1982, as amended at 54 FR 6900, Feb. 15, 1989; 
56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641, 
July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996; 65 
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000]

Sec. 1.13  Copies and certified copies.

    (a) Non-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, 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.
    (b) Certified copies of patents, patent application publications, 
and trademark registrations and of any records,

[[Page 22]]

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 the United States Patent 
and Trademark Office and certified by the Commissioner, or in his or her 
name attested by an officer of the United States Patent and Trademark 
Office authorized by the Commissioner, upon payment of the fee for the 
certified copy.

[65 FR 57051, Sept. 20, 2000]

Sec. 1.14  Patent applications preserved in confidence.

    (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 Sec. 1.11 
or in this section.
    (1) Status information is:
    (i) Whether the application is pending, abandoned, or patented;
    (ii) Whether the application has been published under 35 U.S.C. 
122(b); and
    (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.
    (2) Access is defined as providing the application file for review 
and copying of any material in the application file.
    (b) When status information may be supplied. Status information of 
an application may be supplied by the Office to the public if any of the 
following apply:
    (1) Access to the application is available pursuant to paragraph (e) 
of this section;
    (2) The application is referred to by its numerical identifier in a 
published patent document (e.g., a U.S. patent, a U.S. patent 
application publication, or an international application publication), 
or in a U.S. application open to public inspection (Sec. 1.11(b), or 
paragraph (e)(2)(i) or (e)(2)(ii) of this section);
    (3) The application is a published international application in 
which the United States of America has been indicated as a designated 
state; or
    (4) The application claims the benefit of the filing date of an 
application for which status information may be provided pursuant to 
paragraphs (b)(1) through (b)(3) of this section.
    (c) When copies may be supplied. A copy of an application-as-filed 
or a file wrapper and contents may be supplied by the Office to the 
public, subject to paragraph (i) of this section (which addresses 
international applications), if any of the following apply:
    (1) Application-as-filed.
    (i) If a U.S. patent application publication or patent incorporates 
by reference, or includes a specific reference under 35 U.S.C. 119(e) or 
120 to, a pending or abandoned application, a copy of that application-
as-filed may be provided to any person upon written request including 
the fee set forth in Sec. 1.19(b)(1); or
    (ii) If an international application, which designates the U.S. and 
which has been published in accordance with PCT Article 21(2), 
incorporates by reference or claims priority under PCT Article 8 to a 
pending or abandoned U.S. application, a copy of that application-as-
filed may be provided to any person upon written request including a 
showing that the publication of the application in accordance with PCT 
Article 21(2) has occurred and that the U.S. was designated, and upon 
payment of the appropriate fee set forth in Sec. 1.19(b)(1).
    (2) File wrapper and contents. A copy of the specification, 
drawings, and all papers relating to the file of an abandoned or pending 
published application may be provided to any person upon written 
request, including the fee set forth in Sec. 1.19(b)(2). 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.
    (d) 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

[[Page 23]]

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 Sec. 3.71 of this chapter); or
    (4) A registered attorney or agent named in the papers accompanying 
the application papers filed under Sec. 1.53 or the national stage 
documents filed under Sec. 1.494 or Sec. 1.495, if an executed oath or 
declaration pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
    (e) Public access to a pending or abandoned application. Access to 
an application may be provided to any person, subject to paragraph (i) 
of this section, if a written request for access is submitted, the 
application file is available, and any of the following apply:
    (1) The application is open to public inspection pursuant to 
Sec. 1.11(b); or
    (2) The application is abandoned, it is not within the file jacket 
of a pending application under Sec. 1.53(d), and it is referred to:
    (i) In a U.S. patent application publication or patent;
    (ii) In another U.S. application which is open to public inspection 
either pursuant to Sec. 1.11(b) or paragraph (e)(2)(i) of this section; 
or
    (iii) In an international application which designates the U.S. and 
is published in accordance with PCT Article 21(2).
    (f) 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).
    (g) Decisions by the Commissioner or the Board of Patent Appeals and 
Interferences. Any decision by the Commissioner or the Board of Patent 
Appeals and Interferences which would not otherwise be open to public 
inspection may be published or made available for public inspection if:
    (1) The Commissioner believes the decision involves an 
interpretation of patent laws or regulations that would be of 
precedential value; and
    (2) The applicant, or a party involved in an interference for which 
a decision was rendered, 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.
    (h) Publication pursuant to Sec. 1.47. Information as to the filing 
of an application will be published in the Official Gazette in 
accordance with Sec. 1.47(c).
    (i) 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 
Sec. 1.19(b)(2) or 1.19(b)(3)), if:
    (i) With respect to the Home Copy, the international application was 
filed with the U.S. Receiving Office;
    (ii) With respect to the Search Copy, the U.S. acted as the 
International Searching Authority; or
    (iii) With respect to the Examination Copy, the United States acted 
as the International Preliminary Examining Authority, an International 
Preliminary Examination Report has issued, and the United States was 
elected.

[[Page 24]]

    (2) A copy of an English language translation of an international 
application which has been filed in the United States Patent and 
Trademark Office pursuant to 35 U.S.C. 154(2)(d)(4) will be furnished 
upon written request including a showing that the publication of the 
application in accordance with PCT Article 21(2) has occurred and that 
the U.S. was designated, and upon payment of the appropriate fee 
(Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
    (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 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.
    (4) In accordance with PCT Article 30, copies of an international 
application-as-filed under paragraph (c)(1) 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 (e) 
and (i)(3) of this section will not be permitted with respect to the 
Examination Copy in accordance with PCT Article 38.
    (j) 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 Sec. 1.17(h); 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.

[65 FR 54657, Sept. 8, 2000, as amended at 65 FR 57051, Sept. 20, 2000; 
65 FR 78959, Dec. 18, 2000]

Sec. 1.15  Requests for identifiable records.

    (a) Requests for records, not disclosed to the public as part of the 
regular informational activity of the Patent and Trademark Office and 
which are not otherwise dealt with in the rules in this part, shall be 
made in writing, with the envelope and the letter clearly marked 
``Freedom of Information Request.'' Each such request, so marked, should 
be submitted by mail addressed to the ``Patent and Trademark Office, 
Freedom of Information Request Control Desk, Box 8, Washington, DC 
20231,'' or hand delivered to the Office of the Solicitor, Patent and 
Trademark Office, Arlington, Virginia. The request will be processed in 
accordance with the procedures set forth in part 4 of title 15, Code of 
Federal Regulations.
    (b) Any person whose request for records has been initially denied 
in whole or in part, or has not been timely determined, may submit a 
written appeal as provided in Sec. 4.8 of title 15, Code of Federal 
Regulations.
    (c) Procedures applicable in the event of service of process or in 
connection with testimony of employees on official matters and 
production of official documents of the Patent and Trademark Office in 
civil legal proceedings not involving the United States shall be those 
established in parts 15 and 15a of title 15, Code of Federal 
Regulations.

[53 FR 47686, Nov. 25, 1988]

                        Fees and Payment of Money

Sec. 1.16  National application filing fees.

    (a) Basic fee for filing each application for an original patent, 
except provisional, design or plant applications:

By a small entity (Sec.  1.27(a)).............................   $355.00
By other than a small entity..................................   $710.00


    (b) In addition to the basic filing fee in an original application, 
except provisional applications, for filing or later

[[Page 25]]

presentation of each independent claim in excess of 3:

By a small entity (Sec.  1.27(a)).............................    $40.00
By other than a small entity..................................    $80.00


    (c) In addition to the basic filing fee in an original application, 
except provisional applications, for filing or later presentation of 
each claim (whether independent or dependent) in excess of 20 (Note that 
Sec. 1.75(c) indicates how multiple dependent claims are considered for 
fee calculation purposes.):

By a small entity (Sec.  1.27(a)).............................     $9.00
By other than a small entity..................................    $18.00


    (d) In addition to the basic filing fee in an original application, 
except provisional applications, if the application contains, or is 
amended to contain, a multiple dependent claim(s), per application:

By a small entity (Sec.  1.27(a)).............................   $135.00
By other than a small entity..................................   $270.00


    (e) Surcharge for filing the basic filing fee or oath or declaration 
on a date later than the filing date of the application, except 
provisional applications:

By a small entity (Sec.  1.27(a)).............................    $65.00
By other than a small entity..................................   $130.00


    (f) Basic fee for filing each design application:

By a small entity (Sec.  1.27(a)).............................   $160.00
By other than a small entity..................................   $320.00


    (g) Basic fee for filing each plant application, except provisional 
applications:

By a small entity (Sec.  1.27(a)).............................   $245.00
By other than a small entity..................................   $490.00


    (h) Basic fee for filing each reissue application:

By a small entity (Sec.  1.27(a)).............................   $355.00
By other than a small entity..................................   $710.00


    (i) In addition to the basic filing fee in a reissue application, 
for filing or later presentation of each independent claim which is in 
excess of the number of independent claims in the original patent:

By a small entity (Sec.  1.27(a)).............................    $40.00
By other than a small entity..................................    $80.00


    (j) In addition to the basic filing fee in a reissue application, 
for filing or later presentation of each claim (whether independent or 
dependent) in excess of 20 and also in excess of the number of claims in 
the original patent (Note that Sec. 1.75(c) indicates how multiple 
dependent claims are considered for fee purposes.):

By a small entity (Sec.  1.27(a)).............................     $9.00
By other than a small entity..................................    $18.00


    (k) Basic fee for filing each provisional application:

By a small entity (Sec.  1.27(a)).............................    $75.00
By other than a small entity..................................   $150.00


    (l) Surcharge for filing the basic filing fee or cover sheet 
(Sec. 1.51(c)(1)) on a date later than the filing date of the 
provisional application:

By a small entity (Sec.  1.27(a)).............................    $25.00
By other than a small entity..................................    $50.00


    (m) If the additional fees required by paragraphs (b), (c), (d), (i) 
and (j) of this section are not paid on filing or on later presentation 
of the claims for which the additional fees are due, they must be paid 
or the claims must be canceled by amendment, prior to the expiration of 
the time period set for reply by the Office in any notice of fee 
deficiency.
    Note: See Secs. 1.445, 1.482 and 1.492 for international application 
filing and processing fees.

[56 FR 65151, Dec. 13, 1991, as amended at 57 FR 38194, Aug. 21, 1992; 
60 FR 20221, Apr. 25, 1995; 60 FR 41022, Aug. 11, 1995; 61 FR 39587, 
July 30, 1996; 61 FR 43400, Aug. 22, 1996; 62 FR 40452, July 29, 1997; 
62 FR 53182, Oct. 10, 1997; 63 FR 67579, Dec. 8, 1998; 64 FR 67777, Dec. 
3, 1999; 65 FR 49195, Aug. 11, 2000; 65 FR 78959, Dec. 18, 2000]

Sec. 1.17  Patent application and reexamination processing fees.

    (a) Extension fees pursuant to Sec. 1.136(a):
    (1) For reply within first month:

By a small entity (Sec.  1.27(a))..........................       $55.00
By other than a small entity...............................      $110.00


    (2) For reply within second month:

By a small entity (Sec.  1.27(a))..........................      $195.00
By other than a small entity...............................      $390.00


    (3) For reply within third month:

By a small entity (Sec.  1.27(a))..........................      $445.00
By other than a small entity...............................      $890.00


    (4) For reply within fourth month:

[[Page 26]]



By a small entity (Sec.  1.27(a))..........................      $695.00
By other than a small entity...............................    $1,390.00


    (5) For reply within fifth month:

By a small entity (Sec.  1.27(a))..........................      $945.00
By other than a small entity...............................    $1,890.00


    (b) For filing a notice of appeal from the examiner to the Board of 
Patent Appeals and Interferences:

By a small entity (Sec.  1.27(a))..........................      $155.00
By other than a small entity...............................      $310.00


    (c) In addition to the fee for filing a notice of appeal, for filing 
a brief in support of an appeal:

By a small entity (Sec.  1.27(a))..........................      $155.00
By other than a small entity...............................      $310.00


    (d) For filing a request for an oral hearing before the Board of 
Patent Appeals and Interferences in an appeal under 35 U.S.C. 134:

By a small entity (Sec.  1.27(a))..........................      $135.00
By other than a small entity...............................      $270.00


    (e) To request continued examination pursuant to Sec. 1.114:

By a small entity (Sec.  1.27(a))..........................      $355.00
By other than a small entity...............................      $710.00


    (f)-(g) [Reserved]
    (h) For filing a petition under one of the following sections which 
refers to this paragraph: $130.00.

Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.47--for filing by other than all the inventors or a person not 
the inventor.
Sec. 1.53(e)--to accord a filing date.
Sec. 1.59--for expungement and return of information.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.102--to make an application special.
Sec. 1.103(a)--to suspend action in an application.
Sec. 1.138(c)--to expressly abandon an application to avoid publication.
Sec. 1.182--for decision on a question not specifically provided for.
Sec. 1.183--to suspend the rules.
Sec. 1.295--for review of refusal to publish a statutory invention 
registration.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.377--for review of decision refusing to accept and record payment 
of a maintenance fee filed prior to expiration of a patent.
Sec. 1.378(e)--for reconsideration of decision on petition refusing to 
accept delayed payment of maintenance fee in an expired patent.
Sec. 1.644(e)--for petition in an interference.
Sec. 1.644(f)--for request for reconsideration of a decision on petition 
in an interference.
Sec. 1.666(b)--for access to an interference settlement agreement.
Sec. 1.666(c)--for late filing of interference settlement agreement.
Sec. 1.741(b)--to accord a filing date to an application under 
Sec. 1.740 for extension of a patent term.
Sec. 5.12--for expedited handling of a foreign filing license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for retroactive license.

    (i) Processing fee for taking action under one of the following 
sections which refers to this paragraph: $130.00.

Sec. 1.28(c)(3)--for processing a non-itemized fee deficiency based on 
an error in small entity status.
Sec. 1.41--for supplying the name or names of the inventor or inventors 
after the filing date without an oath or declaration as prescribed by 
Sec. 1.63, except in provisional applications.
Sec. 1.48--for correcting inventorship, except in provisional 
applications.
Sec. 1.52(d)--for processing a nonprovisional application filed with a 
specification in a language other than English.
Sec. 1.53(b)(3)--to convert a provisional application filed under 
Sec. 1.53(c) into a nonprovisional application under Sec. 1.53(b).
Sec. 1.55--for entry of late priority papers.
Sec. 1.99(e)--for processing a belated submission under Sec. 1.99.
Sec. 1.103(b)--for requesting limited suspension of action, continued 
prosecution application (Sec. 1.53(d)).
Sec. 1.103(c)--for requesting limited suspension of action, request for 
continued examination (Sec. 1.114).
Sec. 1.103(d)--for requesting deferred examination of an application.
Sec. 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.
Sec. 1.221--for requesting voluntary publication or republication of an 
application.
Sec. 1.497(d)--for filing an oath or declaration pursuant to 35 U.S.C. 
371(c)(4) naming an inventive entity different from the inventive entity 
set forth in the international stage.

[[Page 27]]

Sec. 3.81--for a patent to issue to assignee, assignment submitted after 
payment of the issue fee.

    (j) For filing a petition to institute a public use proceeding under 
Sec. 1.292--$1,510.00.
    (k) For filing a request for expedited examination under 
Sec. 1.155(a)--$900.00.
    (l) For filing a petition for the revival of an unavoidably 
abandoned application under 35 U.S.C. 111, 133, 364, or 371, for the 
unavoidably delayed payment of the issue fee under 35 U.S.C. 151, or for 
the revival of an unavoidably terminated reexamination proceeding under 
35 U.S.C. 133 (Sec. 1.137(a)):

    By a small entity (Sec. 1.27(a)): $55.00.
    By other than a small entity: $110.00.

    (m) For filing a petition for revival of an unintentionally 
abandoned application, for the unintentionally delayed payment of the 
fee for issuing a patent, or for the revival of an unintentionally 
terminated reexamination proceeding under 35 U.S.C. 41(a)(7) 
(Sec. 1.137(b)):

    By a small entity (Sec. 1.27(a)): $620.00.
    By other than a small entity: $1,240.00.


    (n) For requesting publication of a statutory invention registration 
prior to the mailing of the first examiner's action pursuant to 
Sec. 1.104--$920.00 reduced by the amount of the application basic 
filing fee paid.
    (o) For requesting publication of a statutory invention registration 
after the mailing of the first examiner's action pursuant to 
Sec. 1.104--$1,840.00 reduced by the amount of the application basic 
filing fee paid.
    (p) For an information disclosure statement under Sec. 1.97(c) or 
(d) or a submission under Sec. 1.99: $180.00.
    (q) Processing fee for taking action under one of the following 
sections which refers to this paragraph--$50.00

Sec. 1.41--to supply the name or names of the inventor or inventors 
after the filing date without a cover sheet as prescribed by 
Sec. 1.51(c)(1) in a provisional application.
Sec. 1.48--for correction of inventorship in a provisional application.
Sec. 1.53(c)(2)--to convert a nonprovisional application filed under 
Sec. 1.53(b) to a provisional application under Sec. 1.53(c).

    (r) For entry of a submission after final rejection under 
Sec. 1.129(a):

By a small entity (Sec.  1.27(a))..........................      $355.00
By other than a small entity...............................      $710.00


    (s) For each additional invention requested to be examined under 
Sec. 1.129(b):

By a small entity (Sec.  1.27(a))..........................      $355.00
By other than a small entity...............................      $710.00


    (t) For the acceptance of an unintentionally delayed claim for 
priority under 35 U.S.C. 119, 120, 121, or 365(a) or (c) (Secs. 1.55 and 
1.78): $1,240.00.

[56 FR 65152, Dec. 13, 1991, as amended at 57 FR 2033, Jan 17, 1992; 57 
FR 32439, July 22, 1992; 58 FR 38723, July 20, 1993; 58 FR 45841, Aug. 
31, 1993; 60 FR 20221, Apr. 25, 1995; 62 FR 40452, July 29, 1997; 62 FR 
53182, Oct. 10, 1997; 62 FR 61235, Nov. 17, 1997; 63 FR 67580, Dec. 8, 
1998; 64 FR 67777, Dec. 3, 1999; 65 FR 14871, Mar. 20, 2000; 65 FR 
49195, Aug. 11, 2000; 65 FR 54658, Sept. 8, 2000; 65 FR 57052, Sept. 20, 
2000; 65 FR 78959, Dec. 18, 2000]

Sec. 1.18  Patent post allowance (including issue) fees.

    (a) Issue fee for issuing each original or reissue patent, except a 
design or plant patent:

By a small entity (Sec.  1.27(a))..........................      $620.00
By other than a small entity...............................    $1,240.00


    (b) Issue fee for issuing a design patent:

By a small entity (Sec.  1.27(a))..........................      $220.00
By other than a small entity...............................      $440.00


    (c) Issue fee for issuing a plant patent:

By a small entity (Sec.  1.27(a))..........................      $300.00
By other than a small entity...............................      $600.00


    (d)

Publication fee............................................     $300.00.


    (e) For filing an application for patent term adjustment under 
Sec. 1.705: $200.00.
    (f) For filing a request for reinstatement of all or part of the 
term reduced pursuant to Sec. 1.704(b) in an application for patent term 
adjustment under Sec. 1.705: $400.00.

[65 FR 49195, Aug. 11, 2000, as amended at 65 FR 56391, Sept. 18, 2000; 
65 FR 57053, Sept. 20, 2000; 65 FR 78960, Dec. 18, 2000]

[[Page 28]]

Sec. 1.19  Document supply fees.

    The United States Patent and Trademark Office will supply copies of 
the following documents upon payment of the fees indicated. The 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:

(i) Regular service, which includes preparation of copies by      $3.00.
 the Office within two to three business days and delivery by
 United States Postal Service or to an Office Box; and
 preparation of copies by the Office within one business day
 of receipt and delivery by electronic means (e.g.,
 facsimile, electronic mail).................................
(ii) Next business day delivery to Office Box................     $6.00.
(iii) Expedited delivery by commercial delivery service......    $25.00.
(2) Printed copy of a plant patent in color:.................    $15.00.
(3) Color copy of a patent (other than a plant patent) or        $25.00.
 statutory invention registration containing a color drawing.


    (b) Certified and uncertified copies of Office documents:
    (1) Certified or uncertified copy of the paper portion of patent 
application as filed:
    (i) Regular service--$15.00
    (ii) Expedited regular service--$30.00
    (2) Certified or uncertified copy of paper portion of patent-related 
file wrapper and contents:
    (i) File wrapper and paper contents of 400 or fewer pages--$200.00
    (ii) Additional fee for each additional 100 pages or portion 
thereof--$40.00
    (iii) Additional fee for certification--$25.00
    (3) Certified or uncertified copy on compact disc of patent-related 
file-wrapper contents that were submitted on compact disc:
    (i) First compact disc in a single order--$55.00
    (ii) Each additional compact disc in the single order of paragraph 
(b)(3)(i) of this section--$15.00
    (4) Certified or uncertified copy of Office records, per document 
except as otherwise provided in this section--$25.00
    (5) For assignment records, abstract of title and certification, per 
patent--$25.00
    (c) Library service (35 U.S.C. 13): For providing to libraries 
copies of all patents issued annually, per annum--$50.00
    (d) For list of all United States patents and statutory invention 
registrations in a subclass--$3.00
    (e) Uncertified statement as to status of the payment of maintenance 
fees due on a patent or expiration of a patent--$10.00
    (f) Uncertified copy of a non-United States patent document, per 
document--$25.00
    (g)-(h)  [Reserved]

[56 FR 65152, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
58 FR 38723, July 20, 1993; 60 FR 41022, Aug. 11, 1995; 62 FR 40452, 
July 29, 1997; 64 FR 67486, Dec. 2, 1999; 65 FR 54658, Sept. 8, 2000; 65 
FR 57053, Sept. 20, 2000]

Sec. 1.20  Post issuance fees.

    (a) For providing a certificate of correction for applicant's 
mistake:

(Sec. 1.323)--$100.00

    (b) Processing fee for correcting inventorship in a patent 
(Sec. 1.324)--$130.00.
    (c) In reexamination proceedings
    (1) For filing a request for ex parte reexamination 
(Sec. 1.510(a))--$2,520.00
    (2) For filing a request for inter partes reexamination 
(Sec. 1.915(a))--$8,800.00
    (d) For filing each statutory disclaimer (Sec. 1.321):

By a small entity (Sec.  1.27(a))..........................       $55.00
By other than a small entity...............................      $110.00


    (e) For maintaining an original or 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 is due by three years and six 
months after the original grant:

[[Page 29]]



By a small entity (Sec.  1.27(a))..........................      $425.00
By other than a small entity...............................      $850.00


    (f) For maintaining an original or 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 is due by seven years and six 
months after the original grant:

By a small entity (Sec.  1.27(a))..........................      $975.00
By other than a small entity...............................    $1,950.00


    (g) For maintaining an original or 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 is due by eleven years and 
six months after the original grant:

By a small entity (Sec.  1.27(a))..........................    $1,495.00
By other than a small entity...............................    $2,990.00


    (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 small entity (Sec.  1.27(a))..........................       $65.00
By other than a small entity...............................      $130.00


    (i) Surcharge for accepting a maintenance fee after expiration of a 
patent for non-timely payment of a maintenance fee where the delay in 
payment is shown to the satisfaction of the Commissioner to have been--
    (1) Unavoidable--$700.00
    (2) Unintentional--$1,640.00
    (j) For filing an application for extension of the term of a patent 
(Sec. 1.740)--$1,060.00
    (1) Application for extension under Sec. 1.740--$1,120.00
    (2) Initial application for interim extension under Sec. 1.790--
$420.00
    (3) Subsequent application for interim extension under Sec. 1.790--
$220.00

[56 FR 65153, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
57 FR 56450, Nov. 30, 1992; 58 FR 44280, Aug. 20, 1993; 60 FR 41022, 
Aug. 11, 1995; 61 FR 39588, July 30, 1996; 62 FR 40453, July 29, 1997; 
63 FR 67580, Dec. 8, 1998; 64 FR 67777, Dec. 3, 1999; 65 FR 49195, Aug. 
11, 2000; 65 FR 78960, Dec. 18, 2000; 65 FR 80755, Dec. 22, 2000; 65 FR 
76772, Dec. 7, 2000]

Sec. 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:
    (1) For admission to examination for registration to practice:
    (i) Application Fee (non-refundable)--$40.00
    (ii) Registration examination fee--$310.00
    (2) On registration to practice--$100.00
    (3) For reinstatement to practice--$40.00
    (4) For certificate of good standing as an attorney or agent--$10.00

Suitable for framing--$20.00

    (5) For review of a decision of the Director of Enrollment and 
Discipline under Sec. 10.2(c)--$130.00
    (6) For requesting regrading of an examination under Sec. 10.7(c):

(i) Regrading of seven or fewer questions--$230.00
(ii) Regrading of eight or more questions--$460.00

    (b) Deposit accounts:
    (1) For establishing a deposit account--$10.00
    (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) Disclosure document: For filing a disclosure document--$10.00

[[Page 30]]

    (d) Delivery box: Local delivery box rental, per annum--$50.00
    (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) Self-service copy charge, per page--$0.25
    (h) For recording each assignment, agreement or other paper relating 
to the property in a patent or application, per property--$40.00
    (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) Labor charges for services, per hour or fraction thereof--$40.00
    (k) For items and services that the Commissioner finds may be 
supplied, for which fees are not specified by statute or by this part, 
such charges as may be determined by the Commissioner with respect to 
each such item or service--Actual Cost
    (l) For processing and retaining any application abandoned pursuant 
to Sec. 1.53(f), unless the required basic filing fee (Sec. 1.16)has 
been paid--$130.00
    (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 Sec. 1.53(e)--$130.00
    (o) Marginal cost, paid in advance, for each hour of terminal 
session time, including print time, using Automated Patent System full-
text search capabilities, prorated for the actual time used. The 
Commissioner may waive the payment by an individual for access to the 
Automated Patent System full-text search capability (APS-Text) upon a 
showing of need or hardship, and if such waiver is in the public 
interest--$40.00  

[56 FR 65153, Dec. 13, 1991, as amended at 57 FR 38195, Aug. 21, 1992; 
57 FR 40493, Sept. 3, 1992; 59 FR 43741, Aug. 25, 1994; 60 FR 20222, 
Apr. 25, 1995; 60 FR 41022, Aug. 11, 1995; 61 FR 39588, July 30, 1996; 
61 FR 43400, Aug. 22, 1996; 62 FR 40453, July 29, 1997; 62 FR 53183, 
Oct. 10, 1997; 63 FR 67580, Dec. 8, 1998; 65 FR 33455, May 24, 2000; 65 
FR 49195, Aug. 11, 2000]

Sec. 1.22  Fees payable in advance.

    (a) Patent and trademark fees and charges payable to the 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 Sec. 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, trademark 
registration file, 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 
Sec. 1.5(a) do not apply to the resubmission of fees returned pursuant 
to this paragraph.

(35 U.S.C. 6, Pub. L. 97-247)

[48 FR 2708, Jan. 20, 1983, as amended at 65 FR 54659, Sept. 8, 2000]

Sec. 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 (Sec. 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

[[Page 31]]

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. 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.

[65 FR 33455, May 24, 2000]

Sec. 1.24  [Reserved]

Sec. 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 Patent and 
Trademark Office upon payment of the fee for establishing a deposit 
account (Sec. 1.21(b)(1)). A minimum deposit of $1,000 is required for 
paying any fees 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 
(Sec. 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 (Sec. 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, 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 Secs. 1.16 to 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. 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 as to the particular fee to be charged 
unless sufficient funds are present in the account to cover the fee. An 
authorization to charge fees under Sec. 1.16 in an application submitted 
under Sec. 1.494 or Sec. 1.495 will be treated as an authorization to 
charge fees under Sec. 1.492. An authorization to charge fees set forth 
in Sec. 1.18 to a deposit account is subject to the provisions of 
Sec. 1.311(b). An authorization to charge to a deposit account the fee 
for a request for reexamination pursuant to Sec. 1.510 or Sec. 1.913 and 
any other fees required in a reexamination proceeding in a patent may 
also be filed with the request for reexamination.

(35 U.S.C. 6, Pub. L. 97-247)

[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985; 65 FR 
54659, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000]

Sec. 1.26  Refunds.

    (a) The Commissioner 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 or trademark filing for 
which the fee was paid, including an application, an appeal, or a 
request for an oral hearing, will not entitle a party to a refund of 
such fee. The Office will not refund amounts of twenty-five dollars or 
less

[[Page 32]]

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 Commissioner 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 Sec. 1.28(a). If the Office charges a deposit account by an amount 
other than an amount specifically indicated in an authorization 
(Sec. 1.25(b)), any request for refund based upon such charge must be 
filed within two years from the date of the deposit account statement 
indicating such charge, and include a copy of that deposit account 
statement. The time periods set forth in this paragraph are not 
extendable.
    (c) If the Commissioner decides not to institute a reexamination 
proceeding, for ex parte reexaminations filed under Sec. 1.510, a refund 
of $1,690 will be made to the reexamination requester. For inter partes 
reexaminations filed under Sec. 1.913, a refund of $7,970 will be made 
to the reexamination requester. The reexamination requester should 
indicate the form in which any refund should be made (e.g., by check, 
electronic funds transfer, credit to a deposit account, etc.). 
Generally, reexamination refunds will be issued in the form that the 
original payment was provided.

(35 U.S.C. 6; 15 U.S.C. 1113, 1123)

[47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985; 
54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug. 
21, 1992; 62 FR 53183, Oct. 10, 1997; 65 FR 54659, Sept. 8, 2000; 65 FR 
76773, Dec. 7, 2000]

Sec. 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.

    (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 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, 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.
    (ii) Meets the standards set forth in 13 CFR part 121 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, S.W., Washington, D.C. 20416.

[[Page 33]]

    (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.
    (b) Establishment of small entity status permits payment of reduced 
fees. 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).
    (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 and file the written assertion. The written 
assertion can be signed by:
    (i) One of the parties identified in Sec. 1.33(b) (e.g., an attorney 
or agent registered with the Office), Sec. 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 Sec. 1.63 executed oath or declaration has not been submitted), 
notwithstanding Sec. 1.33(b)(4), who can also file the written assertion 
pursuant to the exception under Sec. 1.33(b) of this part; or
    (iii) An assignee of an undivided part interest, notwithstanding 
Secs. 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 
Sec. 1.33(b) of this part.

[[Page 34]]

    (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 Secs. 1.16(a), (f), (g), 
(h), or (k), or one of the small entity basic national fees set forth in 
Secs. 1.492(a)(1), (a)(2), (a)(3), (a)(4), or (a)(5), 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 Sec. 1.16(e), or 
Sec. 1.16(l).
    (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 Sec. 1.53 
as a continuation, divisional, or continuation-in-part application 
(including a continued prosecution application under Sec. 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 Sec. 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.

[[Page 35]]

The notification that small entity status is no longer appropriate must 
be signed by a party identified in Sec. 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.

[65 FR 54659, Sept. 8, 2000]

Sec. 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 Sec. 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 
Sec. 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 Sec. 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 Sec. 1.27(g)(2), the 
error will be excused upon: compliance with the separate submission and 
itemization requirements 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 Sec. 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

[[Page 36]]

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 Sec. 1.17(i), or result in a requirement for compliance within a one-
month non-extendable time period under Sec. 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 Sec. 1.27(g)(2) as a notification of a loss of 
entitlement to small entity status.

[65 FR 54661, Sept. 8, 2000]
