
[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 36-112]
 
              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 B--National Processing Provisions

     Prosecution of Application and Appointment of Attorney or Agent

Sec. 1.31  Applicants may be represented by a registered attorney or 
          agent.

    An applicant for patent may file and prosecute his or her own case, 
or he or she may be represented by a registered attorney, registered 
agent, or other individual authorized to practice before the Patent and 
Trademark Office in patent cases. See Secs. 10.6 and 10.9 of this 
subchapter. The Patent and Trademark Office cannot aid in the selection 
of a registered attorney or agent.

[50 FR 5171, Feb. 6, 1985]

Sec. 1.32  [Reserved]

Sec. 1.33  Correspondence respecting patent applications, reexamination 
          proceedings, and other proceedings.

    (a) Correspondence address and daytime telephone number. When filing 
an application, a correspondence address must be set forth in either an 
application data sheet (Sec. 1.76), or elsewhere, in a clearly 
identifiable manner, in any paper submitted with an application filing. 
If no correspondence address is specified, the Office may treat the 
mailing address of the first named inventor (if provided, see 
Secs. 1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The 
Office will direct all notices, official letters, and other 
communications relating to the application to the correspondence 
address. The Office will not engage in double correspondence with an 
applicant and a registered attorney or agent, or with more than one 
registered attorney or agent except as deemed necessary by the 
Commissioner. If more than one correspondence address is specified, the 
Office will establish one as the correspondence address. For the party 
to whom correspondence is to be addressed, a daytime telephone number 
should be supplied in a clearly identifiable manner and may be changed 
by any party who may change the correspondence address. The 
correspondence address may be changed as follows:
    (1) Prior to filing of a Sec. 1.63 oath or declaration by any of the 
inventors. If a Sec. 1.63 oath or declaration has not been filed by any 
of the inventors, the correspondence address may be changed by the party 
who filed the application. If the application was filed by a registered 
attorney or agent, any other registered practitioner named in the 
transmittal papers may also change the correspondence address. Thus, the 
inventor(s), any registered practitioner named in the transmittal papers 
accompanying the original application, or a party that will be the 
assignee who filed the application, may change the correspondence 
address in that application under this paragraph.
    (2) Where a Sec. 1.63 oath or declaration has been filed by any of 
the inventors. If a Sec. 1.63 oath or declaration has been filed, or is 
filed concurrent with the filing of an application, by any of the 
inventors, the correspondence address may be changed by the parties set 
forth in paragraph (b) of this section, except for paragraph (b)(2).
    (b) Amendments and other papers. Amendments and other papers, except

[[Page 37]]

for written assertions pursuant to Sec. 1.27(c)(2)(ii) of this part, 
filed in the application must be signed by:
    (1) A registered attorney or agent of record appointed in compliance 
with Sec. 1.34(b);
    (2) A registered attorney or agent not of record who acts in a 
representative capacity under the provisions of Sec. 1.34(a);
    (3) An assignee as provided for under Sec. 3.71(b) of this chapter; 
or
    (4) All of the applicants (Sec. 1.41(b)) for patent, unless there is 
an assignee of the entire interest and such assignee has taken action in 
the application in accordance with Sec. 3.71 of this chapter.
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination proceeding will be directed to 
the attorney or agent of record (see Sec. 1.34(b)) in the patent file at 
the address listed on the register of patent attorneys and agents 
maintained pursuant to Secs. 10.5 and 10.11 or, if no attorney or agent 
is of record, to the patent owner or owners at the address or addresses 
of record. Amendments and other papers filed in a reexamination 
proceeding on behalf of the patent owner must be signed by the patent 
owner, or if there is more than one owner by all the owners, or by an 
attorney or agent of record in the patent file, or by a registered 
attorney or agent not of record who acts in a representative capacity 
under the provisions of Sec. 1.34(a). Double correspondence with the 
patent owner or owners and the patent owner's attorney or agent, or with 
more than one attorney or agent, will not be undertaken. If more than 
one attorney or agent is of record and a correspondence address has not 
been specified, correspondence will be held with the last attorney or 
agent made of record.
    (d) A ``correspondence address'' or change thereto may be filed with 
the Patent and Trademark Office during the enforceable life of the 
patent. The ``correspondence address'' will be used in any 
correspondence relating to maintenance fees unless a separate ``fee 
address'' has been specified. See Sec. 1.363 for ``fee address'' used 
solely for maintenance fee purposes.

[36 FR 12617, July 2, 1971, as amended at 46 FR 29181, May 29, 1981; 49 
FR 34724, Aug. 31, 1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct. 10, 
1997; 65 FR 54661, Sept. 8, 2000]

Sec. 1.34  Recognition for representation.

    (a) When a registered attorney or agent acting in a representative 
capacity, pursuant to Sec. 1.31, appears in person or signs a paper in 
practice before the United States Patent and Trademark Office in a 
patent case, his or her personal appearance or signature shall 
constitute a representation to the United States Patent and Trademark 
Office that under the provisions of this subchapter and the law, he or 
she is authorized to represent the particular party in whose behalf he 
or she acts. In filing such a paper, the registered attorney or agent 
should specify his or her registration number with his or her signature. 
Further proof of authority to act in a representative capacity may be 
required.
    (b) When a registered attorney or agent shall have filed his or her 
power of attorney, or authorization, duly executed by the person or 
persons entitled to prosecute an application or a patent involved in a 
reexamination proceeding, pursuant to Sec. 1.31, he or she is a 
principal registered attorney or agent of record in the case. A 
principal registered attorney or agent, so appointed, may appoint an 
associate registered attorney or agent who shall also then be of record.

[65 FR 54662, Sept. 8, 2000]

Sec. 1.36  Revocation of power of attorney or authorization; withdrawal 
          of registered attorney or agent.

    A power of attorney or authorization of agent, pursuant to 
Sec. 1.31, may be revoked at any stage in the proceedings of a case, and 
a registered attorney or agent may withdraw, upon application to and 
approval by the Commissioner. A registered attorney or agent, except an 
associate registered attorney or agent whose address is the same as that 
of the principal registered attorney or agent, will be notified of the 
revocation of the power of attorney or

[[Page 38]]

authorization, and the applicant or patent owner will be notified of the 
withdrawal of the registered attorney or agent. An assignment will not 
of itself operate as a revocation of a power or authorization previously 
given, but the assignee of the entire interest may revoke previous 
powers and be represented by a registered attorney or agent of the 
assignee's own selection. See Sec. 1.613(d) for withdrawal in an 
interference.

[65 FR 54662, Sept. 8, 2000]

                       Who May Apply for a Patent

Sec. 1.41  Applicant for patent.

    (a) A patent is applied for in the name or names of the actual 
inventor or inventors.
    (1) The inventorship of a nonprovisional application is that 
inventorship set forth in the oath or declaration as prescribed by 
Sec. 1.63, except as provided for in Secs. 1.53(d)(4) and 1.63(d). If an 
oath or declaration as prescribed by Sec. 1.63 is not filed during the 
pendency of a nonprovisional application, the inventorship is that 
inventorship set forth in the application papers filed pursuant to 
Sec. 1.53(b), unless applicant files a paper, including the processing 
fee set forth in Sec. 1.17(i), supplying or changing the name or names 
of the inventor or inventors.
    (2) The inventorship of a provisional application is that 
inventorship set forth in the cover sheet as prescribed by 
Sec. 1.51(c)(1). If a cover sheet as prescribed by Sec. 1.51(c)(1) is 
not filed during the pendency of a provisional application, the 
inventorship is that inventorship set forth in the application papers 
filed pursuant to Sec. 1.53(c), unless applicant files a paper including 
the processing fee set forth in Sec. 1.17(q), supplying or changing the 
name or names of the inventor or inventors.
    (3) In a nonprovisional application filed without an oath or 
declaration as prescribed by Sec. 1.63 or a provisional application 
filed without a cover sheet as prescribed by Sec. 1.51(c)(1), the name, 
residence, and citizenship of each person believed to be an actual 
inventor should be provided when the application papers pursuant to 
Sec. 1.53(b) or Sec. 1.53(c) are filed.
    (4) The inventors who submitted an application under Sec. 1.494 or 
Sec. 1.495 are the inventors in the international application 
designating the United States (Sec. 1.48(f)(1) does not apply to 
applications entering the national stage).
    (b) Unless the contrary is indicated the word ``applicant'' when 
used in these sections refers to the inventor or joint inventors who are 
applying for a patent, or to the person mentioned in Secs. 1.42, 1.43, 
or 1.47 who is applying for a patent in place of the inventor.
    (c) Any person authorized by the applicant may physically or 
electronically deliver an application for patent to the Office on behalf 
of the inventor or inventors, but an oath or declaration for the 
application (Sec. 1.63) can only be made in accordance with Sec. 1.64.
    (d) A showing may be required from the person filing the application 
that the filing was authorized where such authorization comes into 
question.

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

[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 62 
FR 53184, Oct. 10, 1997; 65 FR 54662, Sept. 8, 2000]

Sec. 1.42  When the inventor is dead.

    In case of the death of the inventor, the legal representative 
(executor, administrator, etc.) of the deceased inventor may make the 
necessary oath or declaration, and apply for and obtain the patent. 
Where the inventor dies during the time intervening between the filing 
of the application and the granting of a patent thereon, the letters 
patent may be issued to the legal representative upon proper 
intervention.

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

[48 FR 2709, Jan. 20, 1983]

Sec. 1.43  When the inventor is insane or legally incapacitated.

    In case an inventor is insane or otherwise legally incapacitated, 
the legal representative (guardian, conservator, etc.) of such inventor 
may make the necessary oath or declaration, and apply for and obtain the 
patent.

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

[48 FR 2709, Jan. 20, 1983]

[[Page 39]]

Sec. 1.44  [Reserved]

Sec. 1.45  Joint inventors.

    (a) Joint inventors must apply for a patent jointly and each must 
make the required oath or declaration: neither of them alone, nor less 
than the entire number, can apply for a patent for an invention invented 
by them jointly, except as provided in Sec. 1.47.
    (b) Inventors may apply for a patent jointly even though
    (1) They did not physically work together or at the same time,
    (2) Each inventor did not make the same type or amount of 
contribution, or
    (3) Each inventor did not make a contribution to the subject matter 
of every claim of the application.
    (c) If multiple inventors are named in a nonprovisional application, 
each named inventor must have made a contribution, individually or 
jointly, to the subject matter of at least one claim of the application 
and the application will be considered to be a joint application under 
35 U.S.C. 116. If multiple inventors are named in a provisional 
application, each named inventor must have made a contribution, 
individually or jointly, to the subject matter disclosed in the 
provisional application and the provisional application will be 
considered to be a joint application under 35 U.S.C. 116.

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

[48 FR 2709, Jan. 20, 1983, as amended at 50 FR 9379, Mar. 7, 1985; 60 
FR 20222, Apr. 25, 1995]

Sec. 1.46  Assigned inventions and patents.

    In case the whole or a part interest in the invention or in the 
patent to be issued is assigned, the application must still be made or 
authorized to be made, and an oath or declaration signed, by the 
inventor or one of the persons mentioned in Sec. 1.42, 1.43, or 1.47. 
However, the patent may be issued to the assignee or jointly to the 
inventor and the assignee as provided in Sec. 3.81.

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

[57 FR 29642, July 6, 1992]

Sec. 1.47  Filing when an inventor refuses to sign or cannot be reached.

    (a) If a joint inventor refuses to join in an application for patent 
or cannot be found or reached after diligent effort, the application may 
be made by the other inventor on behalf of himself or herself and the 
nonsigning inventor. The oath or declaration in such an application must 
be accompanied by a petition including proof of the pertinent facts, the 
fee set forth in Sec. 1.17(h), and the last known address of the 
nonsigning inventor. The nonsigning inventor may subsequently join in 
the application by filing an oath or declaration complying with 
Sec. 1.63.
    (b) Whenever all of the inventors refuse to execute an application 
for patent, or cannot be found or reached after diligent effort, a 
person to whom an inventor has assigned or agreed in writing to assign 
the invention, or who otherwise shows sufficient proprietary interest in 
the matter justifying such action, may make application for patent on 
behalf of and as agent for all the inventors. The oath or declaration in 
such an application must be accompanied by a petition including proof of 
the pertinent facts, a showing that such action is necessary to preserve 
the rights of the parties or to prevent irreparable damage, the fee set 
forth in Sec. 1.17(h), and the last known address of all of the 
inventors. An inventor may subsequently join in the application by 
filing an oath or declaration complying with Sec. 1.63.
    (c) The Office will send notice of the filing of the application to 
all inventors who have not joined in the application at the address(es) 
provided in the petition under this section, and publish notice of the 
filing of the application in the Official Gazette. The Office may 
dispense with this notice provision in a continuation or divisional 
application, if notice regarding the filing of the prior application was 
given to the nonsigning inventor(s).

[65 FR 54662, Sept. 8, 2000]

Sec. 1.48  Correction of inventorship in a patent application, other 
          than a reissue application, pursuant to 35 U.S.C. 116.

    (a) Nonprovisional application after oath/declaration filed. If the 
inventive

[[Page 40]]

entity is set forth in error in an executed Sec. 1.63 oath or 
declaration in a nonprovisional application, and such error arose 
without any deceptive intention on the part of the person named as an 
inventor in error or on the part of the person who through error was not 
named as an inventor, the inventorship of the nonprovisional application 
may be amended to name only the actual inventor or inventors. If the 
nonprovisional application is involved in an interference, the amendment 
must comply with the requirements of this section and must be 
accompanied by a motion under Sec. 1.634. Amendment of the inventorship 
requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement from each person being added as an inventor and from 
each person being deleted as an inventor that the error in inventorship 
occurred without deceptive intention on his or her part;
    (3) An oath or declaration by the actual inventor or inventors as 
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or Sec. 1.47;
    (4) The processing fee set forth in Sec. 1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of this 
chapter).
    (b) Nonprovisional application--fewer inventors due to amendment or 
cancellation of claims. If the correct inventors are named in a 
nonprovisional application, and the prosecution of the nonprovisional 
application results in the amendment or cancellation of claims so that 
fewer than all of the currently named inventors are the actual inventors 
of the invention being claimed in the nonprovisional application, an 
amendment must be filed requesting deletion of the name or names of the 
person or persons who are not inventors of the invention being claimed. 
If the application is involved in an interference, the amendment must 
comply with the requirements of this section and must be accompanied by 
a motion under Sec. 1.634. Amendment of the inventorship requires:
    (1) A request, signed by a party set forth in Sec. 1.33(b), to 
correct the inventorship that identifies the named inventor or inventors 
being deleted and acknowledges that the inventor's invention is no 
longer being claimed in the nonprovisional application; and
    (2) The processing fee set forth in Sec. 1.17(i).
    (c) Nonprovisional application--inventors added for claims to 
previously unclaimed subject matter. If a nonprovisional application 
discloses unclaimed subject matter by an inventor or inventors not named 
in the application, the application may be amended to add claims to the 
subject matter and name the correct inventors for the application. If 
the application is involved in an interference, the amendment must 
comply with the requirements of this section and must be accompanied by 
a motion under Sec. 1.634. Amendment of the inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement from each person being added as an inventor that the 
addition is necessitated by amendment of the claims and that the 
inventorship error occurred without deceptive intention on his or her 
part;
    (3) An oath or declaration by the actual inventors as required by 
Sec. 1.63 or as permitted by Secs. 1.42, 1.43, or Sec. 1.47;
    (4) The processing fee set forth in Sec. 1.17(i); and
    (5) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of this 
chapter).
    (d) Provisional application--adding omitted inventors. If the name 
or names of an inventor or inventors were omitted in a provisional 
application through error without any deceptive intention on the part of 
the omitted inventor or inventors, the provisional application may be 
amended to add the name or names of the omitted inventor or inventors. 
Amendment of the inventorship requires:
    (1) A request, signed by a party set forth in Sec. 1.33(b), to 
correct the inventorship that identifies the inventor or inventors being 
added and states that the inventorship error occurred without deceptive 
intention on the

[[Page 41]]

part of the omitted inventor or inventors; and
    (2) The processing fee set forth in Sec. 1.17(q).
    (e) Provisional application--deleting the name or names of the 
inventor or inventors. If a person or persons were named as an inventor 
or inventors in a provisional application through error without any 
deceptive intention on the part of such person or persons, an amendment 
may be filed in the provisional application deleting the name or names 
of the person or persons who were erroneously named. Amendment of the 
inventorship requires:
    (1) A request to correct the inventorship that sets forth the 
desired inventorship change;
    (2) A statement by the person or persons whose name or names are 
being deleted that the inventorship error occurred without deceptive 
intention on the part of such person or persons;
    (3) The processing fee set forth in Sec. 1.17(q); and
    (4) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of this 
chapter).
    (f)(1) Nonprovisional application--filing executed oath/declaration 
corrects inventorship. If the correct inventor or inventors are not 
named on filing a nonprovisional application under Sec. 1.53(b) without 
an executed oath or declaration under Sec. 1.63 by any of the inventors, 
the first submission of an executed oath or declaration under Sec. 1.63 
by any of the inventors during the pendency of the application will act 
to correct the earlier identification of inventorship. See 
Secs. 1.41(a)(4) and 1.497(d) for submission of an executed oath or 
declaration to enter the national stage under 35 U.S.C. 371 and 
Sec. 1.494 or Sec. 1.495 naming an inventive entity different from the 
inventive entity set forth in the international stage.
    (2) Provisional application--filing cover sheet corrects 
inventorship. If the correct inventor or inventors are not named on 
filing a provisional application without a cover sheet under 
Sec. 1.51(c)(1), the later submission of a cover sheet under 
Sec. 1.51(c)(1) during the pendency of the application will act to 
correct the earlier identification of inventorship.
    (g) Additional information may be required. The Office may require 
such other information as may be deemed appropriate under the particular 
circumstances surrounding the correction of inventorship.
    (h) Reissue applications not covered. The provisions of this section 
do not apply to reissue applications. See Secs. 1.171 and 1.175 for 
correction of inventorship in a patent via a reissue application.
    (i) Correction of inventorship in patent or interference. See 
Sec. 1.324 for correction of inventorship in a patent, and Sec. 1.634 
for correction of inventorship in an interference.

[65 FR 54663, Sept. 8, 2000]

                             The Application

Sec. 1.51  General requisites of an application.

    (a) Applications for patents must be made to the Commissioner of 
Patents and Trademarks.
    (b) A complete application filed under Sec. 1.53(b) or Sec. 1.53(d) 
comprises:
    (1) A specification as prescribed by 35 U.S.C. 112, including a 
claim or claims, see Secs. 1.71 to 1.77;
    (2) An oath or declaration, see Secs. 1.63 and 1.68;
    (3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (4) The prescribed filing fee, see Sec. 1.16.
    (c) A complete provisional application filed under Sec. 1.53(c) 
comprises:
    (1) A cover sheet identifying:
    (i) The application as a provisional application,
    (ii) The name or names of the inventor or inventors, (see 
Sec. 1.41(a)(2)),
    (iii) The residence of each named inventor,
    (iv) The title of the invention,
    (v) The name and registration number of the attorney or agent (if 
applicable),
    (vi) The docket number used by the person filing the application to 
identify the application (if applicable),
    (vii) The correspondence address, and
    (viii) The name of the U.S. Government agency and Government 
contract number (if the invention was made by an agency of the U.S. 
Government or under a contract with an agency of the U.S. Government);

[[Page 42]]

    (2) A specification as prescribed by the first paragraph of 35 
U.S.C. 112, see Sec. 1.71;
    (3) Drawings, when necessary, see Secs. 1.81 to 1.85; and
    (4) The prescribed filing fee, see Sec. 1.16.
    (d) Applicants are encouraged to file an information disclosure 
statement in nonprovisional applications. See Sec. 1.97 and Sec. 1.98. 
No information disclosure statement may be filed in a provisional 
application.

[62 FR 53185, Oct. 10, 1997, as amended at 65 FR 54664, Sept. 8, 2000]

Sec. 1.52  Language, paper, writing, margins.

    (a) Papers that are to become a part of the permanent United States 
Patent and Trademark Office records in the file of a patent application 
or a reexamination proceeding. (1) All papers, other than drawings, that 
are to become a part of the permanent United States Patent and Trademark 
Office records in the file of a patent application or reexamination 
proceeding must be on sheets of paper that are the same size, and:
    (i) Flexible, strong, smooth, non-shiny, durable, and white;
    (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm 
(8\1/2\ by 11 inches), with each sheet including a top margin of at 
least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), 
a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin 
of at least 2.0 cm (3/4 inch);
    (iii) Written on only one side in portrait orientation;
    (iv) Plainly and legibly written either by a typewriter or machine 
printer in permanent dark ink or its equivalent; and
    (v) Presented in a form having sufficient clarity and contrast 
between the paper and the writing thereon to permit the direct 
reproduction of readily legible copies in any number by use of 
photographic, electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging and optical character 
recognition.
    (2) All papers that are to become a part of the permanent records of 
the United States Patent and Trademark Office should have no holes in 
the sheets as submitted.
    (3) The provisions of this paragraph and paragraph (b) of this 
section do not apply to the pre-printed information on forms provided by 
the Office, or to the copy of the patent submitted in double column 
format as the specification in a reissue application or request for 
reexamination.
    (4) See Sec. 1.58 for chemical and mathematical formulae and tables, 
and Sec. 1.84 for drawings.
    (5) If papers that do not comply with paragraph (a)(1) of this 
section are submitted as part of the permanent record, other than the 
drawings, applicant, or the patent owner, or the requester in a 
reexamination proceeding, will be notified and must provide substitute 
papers that comply with paragraph (a)(1) of this section within a set 
time period.
    (b) The application (specification, including the claims, drawings, 
and oath or declaration) or reexamination proceeding and any amendments 
or corrections to the application or reexamination proceeding. (1) The 
application or proceeding and any amendments or corrections to the 
application (including any translation submitted pursuant to paragraph 
(d) of this section) or proceeding, except as provided for in Sec. 1.69 
and paragraph (d) of this section, must:
    (i) Comply with the requirements of paragraph (a) of this section; 
and
    (ii) Be in the English language or be accompanied by a translation 
of the application and a translation of any corrections or amendments 
into the English language together with a statement that the translation 
is accurate.
    (2) The specification (including the abstract and claims) for other 
than reissue applications and reexamination proceedings, and any 
amendments for applications (including reissue applications) and 
reexamination proceedings to the specification, except as provided for 
in Secs. 1.821 through 1.825, must have:
    (i) Lines that are 1\1/2\ or double spaced;
    (ii) Text written in a nonscript type font (e.g., Arial, Times 
Roman, or Courier) lettering style having capital letters which are at 
least 0.21 cm (0.08 inch) high; and
    (iii) Only a single column of text.

[[Page 43]]

    (3) The claim or claims must commence on a separate sheet 
(Sec. 1.75(h)).
    (4) The abstract must commence on a separate sheet or be submitted 
as the first page of the patent in a reissue application or 
reexamination proceeding (Sec. 1.72(b)).
    (5) Other than in a reissue application or reexamination proceeding, 
the pages of the specification including claims and abstract must be 
numbered consecutively, starting with 1, the numbers being centrally 
located above or preferably, below, the text.
    (6) Other than in a reissue application or reexamination proceeding, 
the paragraphs of the specification, other than in the claims or 
abstract, may be numbered at the time the application is filed, and 
should be individually and consecutively numbered using Arabic numerals, 
so as to unambiguously identify each paragraph. The number should 
consist of at least four numerals enclosed in square brackets, including 
leading zeros (e.g., [0001]). The numbers and enclosing brackets should 
appear to the right of the left margin as the first item in each 
paragraph, before the first word of the paragraph, and should be 
highlighted in bold. A gap, equivalent to approximately four spaces, 
should follow the number. Nontext elements (e.g., tables, mathematical 
or chemical formulae, chemical structures, and sequence data) are 
considered part of the numbered paragraph around or above the elements, 
and should not be independently numbered. If a nontext element extends 
to the left margin, it should not be numbered as a separate and 
independent paragraph. A list is also treated as part of the paragraph 
around or above the list, and should not be independently numbered. 
Paragraph or section headers (titles), whether abutting the left margin 
or centered on the page, are not considered paragraphs and should not be 
numbered.
    (7) If papers that do not comply with paragraphs (b)(1) through 
(b)(5) of this section are submitted as part of the application, 
applicant, or patent owner, or requester in a reexamination proceeding, 
will be notified and the applicant, patent owner or requester in a 
reexamination proceeding must provide substitute papers that comply with 
paragraphs (b)(1) through (b)(5) of this section within a set time 
period.
    (c)(1) Any interlineation, erasure, cancellation or other alteration 
of the application papers filed must be made before the signing of any 
accompanying oath or declaration pursuant to Sec. 1.63 referring to 
those application papers and should be dated and initialed or signed by 
the applicant on the same sheet of paper. Application papers containing 
alterations made after the signing of an oath or declaration referring 
to those application papers must be supported by a supplemental oath or 
declaration under Sec. 1.67. In either situation, a substitute 
specification (Sec. 1.125) is required if the application papers do not 
comply with paragraphs (a) and (b) of this section.
    (2) After the signing of the oath or declaration referring to the 
application papers, amendments may only be made in the manner provided 
by Sec. 1.121.
    (3) Notwithstanding the provisions of this paragraph, if an oath or 
declaration is a copy of the oath or declaration from a prior 
application, the application for which such copy is submitted may 
contain alterations that do not introduce matter that would have been 
new matter in the prior application.
    (d) A nonprovisional or provisional application may be filed in a 
language other than English.
    (1) Nonprovisional application. If a nonprovisional application is 
filed in a language other than English, an English language translation 
of the non-English language application, a statement that the 
translation is accurate, and the processing fee set forth in 
Sec. 1.17(i) are required. If these items are not filed with the 
application, applicant will be notified and given a period of time 
within which they must be filed in order to avoid abandonment.
    (2) Provisional application. If a provisional application is filed 
in a language other than English, an English language translation of the 
non-English language provisional application will not be required in the 
provisional application. See Sec. 1.78(a) for the requirements for 
claiming the benefit of such provisional application in a nonprovisional 
application.

[[Page 44]]

    (e) Electronic documents that are to become part of the permanent 
United States Patent and Trademark Office records in the file of a 
patent application or reexamination proceeding. (1) The following 
documents may be submitted to the Office on a compact disc in compliance 
with this paragraph:
    (i) A computer program listing (see Sec. 1.96);
    (ii) A ``Sequence Listing'' (submitted under Sec. 1.821(c)); or
    (iii) A table (see Sec. 1.58) that has more than 50 pages of text.
    (2) A compact disc as used in this part means a Compact Disc-Read 
Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance 
with this paragraph. A CD-ROM is a ``read-only'' medium on which the 
data is pressed into the disc so that it cannot be changed or erased. A 
CD-R is a ``write once'' medium on which once the data is recorded, it 
is permanent and cannot be changed or erased.
    (3)(i) Each compact disc must conform to the International Standards 
Organization (ISO) 9660 standard, and the contents of each compact disc 
must be in compliance with the American Standard Code for Information 
Interchange (ASCII).
    (ii) Each compact disc must be enclosed in a hard compact disc case 
within an unsealed padded and protective mailing envelope and 
accompanied by a transmittal letter on paper in accordance with 
paragraph (a) of this section. The transmittal letter must list for each 
compact disc the machine format (e.g., IBM-PC, Macintosh), the operating 
system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list 
of files contained on the compact disc including their names, sizes in 
bytes, and dates of creation, plus any other special information that is 
necessary to identify, maintain, and interpret the information on the 
compact disc. Compact discs submitted to the Office will not be returned 
to the applicant.
    (4) Any compact disc must be submitted in duplicate unless it 
contains only the ``Sequence Listing'' in computer readable form 
required by Sec. 1.821(e). The compact disc and duplicate copy must be 
labeled ``Copy 1'' and ``Copy 2,'' respectively. The transmittal letter 
which accompanies the compact disc must include a statement that the two 
compact discs are identical. In the event that the two compact discs are 
not identical, the Office will use the compact disc labeled ``Copy 1'' 
for further processing. Any amendment to the information on a compact 
disc must be by way of a replacement compact disc in compliance with 
this paragraph containing the substitute information, and must be 
accompanied by a statement that the replacement compact disc contains no 
new matter. The compact disc and copy must be labeled ``COPY 1 
REPLACEMENT MM/DD/YYYY'' (with the month, day and year of creation 
indicated), and ``COPY 2 REPLACEMENT MM/DD/YYYY,'' respectively.
    (5) The specification must contain an incorporation-by-reference of 
the material on the compact disc in a separate paragraph 
(Sec. 1.77(b)(4)), identifying each compact disc by the names of the 
files contained on each of the compact discs, their date of creation and 
their sizes in bytes. The Office may require applicant to amend the 
specification to include in the paper portion any part of the 
specification previously submitted on compact disc.
    (6) A compact disc must also be labeled with the following 
information:
    (i) The name of each inventor (if known);
    (ii) Title of the invention;
    (iii) The docket number, or application number if known, used by the 
person filing the application to identify the application; and
    (iv) A creation date of the compact disc.
    (v) If multiple compact discs are submitted, the label shall 
indicate their order (e.g. ``1 of X'').
    (vi) An indication that the disk is ``Copy 1'' or ``Copy 2'' of the 
submission. See paragraph (b)(4) of this section.
    (7) If a file is unreadable on both copies of the disc, the 
unreadable file will be treated as not having been submitted. A file is 
unreadable if, for example, it is of a format that does not

[[Page 45]]

comply with the requirements of paragraph (e)(3) of this section, it is 
corrupted by a computer virus, or it is written onto a defective compact 
disc.

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

[43 FR 20462, May. 11, 1978, as amended at 47 FR 41275, Sept. 17, 1982; 
48 FR 2709, Jan. 20, 1983; 49 FR 554, Jan. 4, 1984; 57 FR 2033, Jan. 17, 
1992; 61 FR 42803, Aug. 19, 1996; 62 FR 53186, Oct. 10, 1997; 65 FR 
54664, Sept. 8, 2000; 65 FR 57053, Sept. 20, 2000]

Sec. 1.53  Application number, filing date, and completion of 
          application.

    (a) Application number. Any papers received in the Patent and 
Trademark Office which purport to be an application for a patent will be 
assigned an application number for identification purposes.
    (b) Application filing requirements--Nonprovisional application. The 
filing date of an application for patent filed under this section, 
except for a provisional application under paragraph (c) of this section 
or a continued prosecution application under paragraph (d) of this 
section, is the date on which a specification as prescribed by 35 U.S.C. 
112 containing a description pursuant to Sec. 1.71 and at least one 
claim pursuant to Sec. 1.75, and any drawing required by Sec. 1.81(a) 
are filed in the Patent and Trademark Office. No new matter may be 
introduced into an application after its filing date. A continuing 
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35 
U.S.C. 120, 121 or 365(c) and Sec. 1.78(a).
    (1) A continuation or divisional application that names as inventors 
the same or fewer than all of the inventors named in the prior 
application may be filed under this paragraph or paragraph (d) of this 
section.
    (2) A continuation-in-part application (which may disclose and claim 
subject matter not disclosed in the prior application) or a continuation 
or divisional application naming an inventor not named in the prior 
application must be filed under this paragraph.
    (c) Application filing requirements--Provisional application. The 
filing date of a provisional application is the date on which a 
specification as prescribed by the first paragraph of 35 U.S.C. 112, and 
any drawing required by Sec. 1.81(a) are filed in the Patent and 
Trademark Office. No amendment, other than to make the provisional 
application comply with the patent statute and all applicable 
regulations, may be made to the provisional application after the filing 
date of the provisional application.
    (1) A provisional application must also include the cover sheet 
required by Sec. 1.51(c)(1), which may be an application data sheet 
(Sec. 1.76), or a cover letter identifying the application as a 
provisional application. Otherwise, the application will be treated as 
an application filed under paragraph (b) of this section.
    (2) An application for patent filed under paragraph (b) of this 
section may be converted to a provisional application and be accorded 
the original filing date of the application filed under paragraph (b) of 
this section. The grant of such a request for conversion will not 
entitle applicant to a refund of the fees that were properly paid in the 
application filed under paragraph (b) of this section. Such a request 
for conversion must be accompanied by the processing fee set forth in 
Sec. 1.17(q) and be filed prior to the earliest of:
    (i) Abandonment of the application filed under paragraph (b) of this 
section;
    (ii) Payment of the issue fee on the application filed under 
paragraph (b) of this section;
    (iii) Expiration of twelve months after the filing date of the 
application filed under paragraph (b) of this section; or
    (iv) The filing of a request for a statutory invention registration 
under Sec. 1.293 in the application filed under paragraph (b) of this 
section.
    (3) A provisional application filed under paragraph (c) of this 
section may be converted to a nonprovisional application filed under 
paragraph (b) of this section and accorded the original filing date of 
the provisional application. The conversion of a provisional application 
to a nonprovisional application will not result in either the refund of 
any fee properly paid in the provisional application or the application 
of any such

[[Page 46]]

fee to the filing fee, or any other fee, for the nonprovisional 
application. Conversion of a provisional application to a nonprovisional 
application under this paragraph will result in the term of any patent 
to issue from the application being measured from at least the filing 
date of the provisional application for which conversion is requested. 
Thus, applicants should consider avoiding this adverse patent term 
impact by filing a nonprovisional application claiming the benefit of 
the provisional application under 35 U.S.C. 119(e) (rather than 
converting the provisional application into a nonprovisional application 
pursuant to this paragraph). A request to convert a provisional 
application to a nonprovisional application must be accompanied by the 
fee set forth in Sec. 1.17(i) and an amendment including at least one 
claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the 
provisional application under paragraph (c) of this section otherwise 
contains at least one claim as prescribed by the second paragraph of 35 
U.S.C. 112. The nonprovisional application resulting from conversion of 
a provisional application must also include the filing fee for a 
nonprovisional application, an oath or declaration by the applicant 
pursuant to Secs. 1.63, 1.162, or 1.175, and the surcharge required by 
Sec. 1.16(e) if either the basic filing fee for a nonprovisional 
application or the oath or declaration was not present on the filing 
date accorded the resulting nonprovisional application (i.e., the filing 
date of the original provisional application). A request to convert a 
provisional application to a nonprovisional application must also be 
filed prior to the earliest of:
    (i) Abandonment of the provisional application filed under paragraph 
(c) of this section; or
    (ii) Expiration of twelve months after the filing date of the 
provisional application filed under this paragraph (c).
    (4) A provisional application is not entitled to the right of 
priority under 35 U.S.C. 119 or 365(a) or Sec. 1.55, or to the benefit 
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or 
Sec. 1.78 of any other application. No claim for priority under 35 
U.S.C. 119(e) or Sec. 1.78(a)(4) may be made in a design application 
based on a provisional application. No request under Sec. 1.293 for a 
statutory invention registration may be filed in a provisional 
application. The requirements of Secs. 1.821 through 1.825 regarding 
application disclosures containing nucleotide and/or amino acid 
sequences are not mandatory for provisional applications.
    (d) Application filing requirements--Continued prosecution 
(nonprovisional) application. (1) A continuation or divisional 
application (but not a continuation-in-part) of a prior nonprovisional 
application may be filed as a continued prosecution application under 
this paragraph, provided that:
    (i) The prior nonprovisional application is:
    (A) A utility or plant application that was filed under 35 U.S.C. 
111(a) before May 29, 2000, and is complete as defined by Sec. 1.51(b);
    (B) A design application that is complete as defined by 
Sec. 1.51(b); or
    (C) The national stage of an international application that was 
filed under 35 U.S.C. 363 before May 29, 2000, and is in compliance with 
35 U.S.C. 371; and
    (ii) The application under this paragraph is filed before the 
earliest of:
    (A) Payment of the issue fee on the prior application, unless a 
petition under Sec. 1.313(c) is granted in the prior application;
    (B) Abandonment of the prior application; or
    (C) Termination of proceedings on the prior application.
    (2) The filing date of a continued prosecution application is the 
date on which a request on a separate paper for an application under 
this paragraph is filed. An application filed under this paragraph:
    (i) Must identify the prior application;
    (ii) Discloses and claims only subject matter disclosed in the prior 
application;
    (iii) Names as inventors the same inventors named in the prior 
application on the date the application under this paragraph was filed, 
except as provided in paragraph (d)(4) of this section;
    (iv) Includes the request for an application under this paragraph, 
will utilize the file jacket and contents of the

[[Page 47]]

prior application, including the specification, drawings and oath or 
declaration from the prior application, to constitute the new 
application, and will be assigned the application number of the prior 
application for identification purposes; and
    (v) Is a request to expressly abandon the prior application as of 
the filing date of the request for an application under this paragraph.
    (3) The filing fee for a continued prosecution application filed 
under this paragraph is:
    (i) The basic filing fee as set forth in Sec. 1.16; and
    (ii) Any additional Sec. 1.16 fee due based on the number of claims 
remaining in the application after entry of any amendment accompanying 
the request for an application under this paragraph and entry of any 
amendments under Sec. 1.116 unentered in the prior application which 
applicant has requested to be entered in the continued prosecution 
application.
    (4) An application filed under this paragraph may be filed by fewer 
than all the inventors named in the prior application, provided that the 
request for an application under this paragraph when filed is 
accompanied by a statement requesting deletion of the name or names of 
the person or persons who are not inventors of the invention being 
claimed in the new application. No person may be named as an inventor in 
an application filed under this paragraph who was not named as an 
inventor in the prior application on the date the application under this 
paragraph was filed, except by way of correction of inventorship under 
Sec. 1.48.
    (5) Any new change must be made in the form of an amendment to the 
prior application as it existed prior to the filing of an application 
under this paragraph. No amendment in an application under this 
paragraph (a continued prosecution application) may introduce new matter 
or matter that would have been new matter in the prior application. Any 
new specification filed with the request for an application under this 
paragraph will not be considered part of the original application 
papers, but will be treated as a substitute specification in accordance 
with Sec. 1.125.
    (6) The filing of a continued prosecution application under this 
paragraph will be construed to include a waiver of confidentiality by 
the applicant under 35 U.S.C. 122 to the extent that any member of the 
public, who is entitled under the provisions of Sec. 1.14 to access to, 
copies of, or information concerning either the prior application or any 
continuing application filed under the provisions of this paragraph, may 
be given similar access to, copies of, or similar information concerning 
the other application or applications in the file jacket.
    (7) A request for an application under this paragraph is the 
specific reference required by 35 U.S.C. 120 to every application 
assigned the application number identified in such request. No amendment 
in an application under this paragraph may delete this specific 
reference to any prior application.
    (8) In addition to identifying the application number of the prior 
application, applicant should furnish in the request for an application 
under this paragraph the following information relating to the prior 
application to the best of his or her ability:
    (i) Title of invention;
    (ii) Name of applicant(s); and
    (iii) Correspondence address.
    (9) Envelopes containing only requests and fees for filing an 
application under this paragraph should be marked ``Box CPA.'' Requests 
for an application under this paragraph filed by facsimile transmission 
should be clearly marked ``Box CPA.''
    (10) See Sec. 1.103(b) for requesting a limited suspension of action 
in an application filed under this paragraph.
    (e) Failure to meet filing date requirements. (1) If an application 
deposited under paragraph (b), (c), or (d) of this section does not meet 
the requirements of such paragraph to be entitled to a filing date, 
applicant will be so notified, if a correspondence address has been 
provided, and given a time period within which to correct the filing 
error.
    (2) Any request for review of a notification pursuant to paragraph 
(e)(1) of this section, or a notification that the original application 
papers lack a portion of the specification or drawing(s), must be by way 
of a petition pursuant

[[Page 48]]

to this paragraph accompanied by the fee set forth in Sec. 1.17(h). In 
the absence of a timely (Sec. 1.181(f)) petition pursuant to this 
paragraph, the filing date of an application in which the applicant was 
notified of a filing error pursuant to paragraph (e)(1) of this section 
will be the date the filing error is corrected.
    (3) If an applicant is notified of a filing error pursuant to 
paragraph (e)(1) of this section, but fails to correct the filing error 
within the given time period or otherwise timely (Sec. 1.181(f)) take 
action pursuant to this paragraph, proceedings in the application will 
be considered terminated. Where proceedings in an application are 
terminated pursuant to this paragraph, the application may be disposed 
of, and any filing fees, less the handling fee set forth in 
Sec. 1.21(n), will be refunded.
    (f) Completion of application subsequent to filing--Nonprovisional 
(including continued prosecution or reissue) application. (1) If an 
application which has been accorded a filing date pursuant to paragraph 
(b) or (d) of this section does not include the basic filing fee, or if 
an application which has been accorded a filing date pursuant to 
paragraph (b) of this section does not include an oath or declaration by 
the applicant pursuant to Secs. 1.63, 1.162 or Sec. 1.175, and applicant 
has provided a correspondence address (Sec. 1.33(a)), applicant will be 
notified and given a period of time within which to pay the filing fee, 
file an oath or declaration in an application under paragraph (b) of 
this section, and pay the surcharge required by Sec. 1.16(e) to avoid 
abandonment.
    (2) If an application which has been accorded a filing date pursuant 
to paragraph (b) of this section does not include the basic filing fee 
or an oath or declaration by the applicant pursuant to Secs. 1.63, 1.162 
or Sec. 1.175, and applicant has not provided a correspondence address 
(Sec. 1.33(a)), applicant has two months from the filing date of the 
application within which to pay the basic filing fee, file an oath or 
declaration, and pay the surcharge required by Sec. 1.16(e) to avoid 
abandonment.
    (3) This paragraph applies to continuation or divisional 
applications under paragraphs (b) or (d) of this section and to 
continuation-in-part applications under paragraph (b) of this section.
    (4) See Sec. 1.63(d) concerning the submission of a copy of the oath 
or declaration from the prior application for a continuation or 
divisional application under paragraph (b) of this section.
    (5) If applicant does not pay one of the basic filing or the 
processing and retention fees (Sec. 1.21(l)) during the pendency of the 
application, the Office may dispose of the application.
    (g) Completion of application subsequent to filing--provisional 
application. (1) If a provisional application which has been accorded a 
filing date pursuant to paragraph (c) of this section does not include 
the cover sheet required by Sec. 1.51(c)(1) or the basic filing fee 
(Sec. 1.16(k)), and applicant has provided a correspondence address 
(Sec. 1.33(a)), applicant will be notified and given a period of time 
within which to pay the basic filing fee, file a cover sheet 
(Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(l) to 
avoid abandonment.
    (2) If a provisional application which has been accorded a filing 
date pursuant to paragraph (c) of this section does not include the 
cover sheet required by Sec. 1.51(c)(1) or the basic filing fee 
(Sec. 1.16(k)), and applicant has not provided a correspondence address 
(Sec. 1.33(a)), applicant has two months from the filing date of the 
application within which to pay the basic filing fee, file a cover sheet 
(Sec. 1.51(c)(1)), and pay the surcharge required by Sec. 1.16(l) to 
avoid abandonment.
    (3) If applicant does not pay the basic filing fee during the 
pendency of the application, the Office may dispose of the application.
    (h) Subsequent treatment of application--Nonprovisional (including 
continued prosecution) application. An application for a patent filed 
under paragraphs (b) or (d) of this section will not be placed on the 
files for examination until all its required parts, complying with the 
rules relating thereto, are received, except that certain minor 
informalities may be waived subject to subsequent correction whenever 
required.
    (i) Subsequent treatment of application--Provisional application. A 
provisional application for a patent filed under paragraph (c) of this 
section will

[[Page 49]]

not be placed on the files for examination and will become abandoned no 
later than twelve months after its filing date pursuant to 35 U.S.C. 
111(b)(1).
    (j) Filing date of international application. The filing date of an 
international application designating the United States of America is 
treated as the filing date in the United States of America under PCT 
Article 11(3), except as provided in 35 U.S.C. 102(e).

[62 FR 53186, Oct. 10, 1997, as amended at 63 FR 5734, Feb. 4, 1998; 65 
FR 14871, Mar. 20, 2000; 65 FR 50104, Aug. 16, 2000; 65 FR 54665, Sept. 
8, 2000; 65 FR 78960, Dec. 18, 2000]

Sec. 1.54  Parts of application to be filed together; filing receipt.

    (a) It is desirable that all parts of the complete application be 
deposited in the Office together; otherwise, a letter must accompany 
each part, accurately and clearly connecting it with the other parts of 
the application. See Sec. 1.53 (f) and (g) with regard to completion of 
an application.
    (b) Applicant will be informed of the application number and filing 
date by a filing receipt, unless the application is an application filed 
under Sec. 1.53(d).

[62 FR 53188, Oct. 10, 1997]

Sec. 1.55  Claim for foreign priority.

    (a) An applicant in a nonprovisional application may claim the 
benefit of the filing date of one or more prior foreign applications 
under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 
172, and 365(a) and (b).
    (1)(i) In an original application filed under 35 U.S.C. 111(a), the 
claim for priority must be presented during the pendency of the 
application, and within the later of four months from the actual filing 
date of the application or sixteen months from the filing date of the 
prior foreign application. This time period is not extendable. The claim 
must identify the foreign application for which priority is claimed, as 
well as any foreign application for the same subject matter and having a 
filing date before that of the application for which priority is 
claimed, by specifying the application number, country (or intellectual 
property authority), day, month, and year of its filing. The time period 
in this paragraph does not apply to an application for a design patent.
    (ii) In an application that entered the national stage from an 
international application after compliance with 35 U.S.C. 371, the claim 
for priority must be made during the pendency of the application and 
within the time limit set forth in the PCT and the Regulations under the 
PCT.
    (2) The claim for priority and the certified copy of the foreign 
application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any 
event, be filed before the patent is granted. If the claim for priority 
or the certified copy of the foreign application is filed after the date 
the issue fee is paid, it must be accompanied by the processing fee set 
forth in Sec. 1.17(i), but the patent will not include the priority 
claim unless corrected by a certificate of correction under 35 U.S.C. 
255 and Sec. 1.323.
    (3) When the application becomes involved in an interference 
(Sec. 1.630), when necessary to overcome the date of a reference relied 
upon by the examiner, or when deemed necessary by the examiner, the 
Office may require that the claim for priority and the certified copy of 
the foreign application be filed earlier than provided in paragraphs 
(a)(1) or (a)(2) of this section.
    (4) An English language translation of a non-English language 
foreign application is not required except when the application is 
involved in an interference (Sec. 1.630), when necessary to overcome the 
date of a reference relied upon by the examiner, or when specifically 
required by the examiner. If an English language translation is 
required, it must be filed together with a statement that the 
translation of the certified copy is accurate.
    (b) An applicant in a nonprovisional application may under certain 
circumstances claim priority on the basis of one or more applications 
for an inventor's certificate in a country granting both inventor's 
certificates and patents. To claim the right of priority on the basis of 
an application for an inventor's certificate in such a country under 35 
U.S.C. 119(d), the applicant when submitting a claim for such right as 
specified in paragraph (a) of this section, shall include an affidavit 
or declaration. The affidavit or declaration must include a specific 
statement that,

[[Page 50]]

upon an investigation, he or she is satisfied that to the best of his or 
her knowledge, the applicant, when filing the application for the 
inventor's certificate, had the option to file an application for either 
a patent or an inventor's certificate as to the subject matter of the 
identified claim or claims forming the basis for the claim of priority.
    (c) Unless such claim is accepted in accordance with the provisions 
of this paragraph, any claim for priority under 35 U.S.C. 119(a) through 
(d) and (f), or 365(a) not presented within the time period provided by 
paragraph (a) of this section is considered to have been waived. If a 
claim for priority under 35 U.S.C. 119(a) through (d) and (f), or 365(a) 
is presented after the time period provided by paragraph (a) of this 
section, the claim may be accepted if the claim identifying the prior 
foreign application by specifying its application number, country (or 
intellectual property authority), and the day, month, and year of its 
filing was unintentionally delayed. A petition to accept a delayed claim 
for priority under 35 U.S.C. 119(a) through (d) and (f), or 365(a) must 
be accompanied by:
    (1) The surcharge set forth in Sec. 1.17(t); and
    (2) A statement that the entire delay between the date the claim was 
due under paragraph (a)(1) of this section and the date the claim was 
filed was unintentional. The Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.

[60 FR 20224, Apr. 25, 1995, as amended at 62 FR 53188, Oct. 10, 1997; 
65 FR 54666, Sept. 8, 2000; 65 FR 57053, Sept. 20, 2000; 65 FR 66502, 
Nov. 6, 2000]

Sec. 1.56  Duty to disclose information material to patentability.

    (a) A patent by its very nature is affected with a public interest. 
The public interest is best served, and the most effective patent 
examination occurs when, at the time an application is being examined, 
the Office is aware of and evaluates the teachings of all information 
material to patentability. Each individual associated with the filing 
and prosecution of a patent application has a duty of candor and good 
faith in dealing with the Office, which includes a duty to disclose to 
the Office all information known to that individual to be material to 
patentability as defined in this section. The duty to disclose 
information exists with respect to each pending claim until the claim is 
cancelled or withdrawn from consideration, or the application becomes 
abandoned. Information material to the patentability of a claim that is 
cancelled or withdrawn from consideration need not be submitted if the 
information is not material to the patentability of any claim remaining 
under consideration in the application. There is no duty to submit 
information which is not material to the patentability of any existing 
claim. The duty to disclose all information known to be material to 
patentability is deemed to be satisfied if all information known to be 
material to patentability of any claim issued in a patent was cited by 
the Office or submitted to the Office in the manner prescribed by 
Secs. 1.97(b)-(d) and 1.98. However, no patent will be granted on an 
application in connection with which fraud on the Office was practiced 
or attempted or the duty of disclosure was violated through bad faith or 
intentional misconduct. The Office encourages applicants to carefully 
examine:
    (1) Prior art cited in search reports of a foreign patent office in 
a counterpart application, and
    (2) The closest information over which individuals associated with 
the filing or prosecution of a patent application believe any pending 
claim patentably defines, to make sure that any material information 
contained therein is disclosed to the Office.
    (b) Under this section, information is material to patentability 
when it is not cumulative to information already of record or being made 
of record in the application, and
    (1) It establishes, by itself or in combination with other 
information, a prima facie case of unpatentability of a claim; or
    (2) It refutes, or is inconsistent with, a position the applicant 
takes in:
    (i) Opposing an argument of unpatentability relied on by the Office, 
or

[[Page 51]]

    (ii) Asserting an argument of patentability.

A prima facie case of unpatentability is established when the 
information compels a conclusion that a claim is unpatentable under the 
preponderance of evidence, burden-of-proof standard, giving each term in 
the claim its broadest reasonable construction consistent with the 
specification, and before any consideration is given to evidence which 
may be submitted in an attempt to establish a contrary conclusion of 
patentability.
    (c) Individuals associated with the filing or prosecution of a 
patent application within the meaning of this section are:
    (1) Each inventor named in the application;
    (2) Each attorney or agent who prepares or prosecutes the 
application; and
    (3) Every other person who is substantively involved in the 
preparation or prosecution of the application and who is associated with 
the inventor, with the assignee or with anyone to whom there is an 
obligation to assign the application.
    (d) Individuals other than the attorney, agent or inventor may 
comply with this section by disclosing information to the attorney, 
agent, or inventor.
    (e) In any continuation-in-part application, the duty under this 
section includes the duty to disclose to the Office all information 
known to the person to be material to patentability, as defined in 
paragraph (b) of this section, which became available between the filing 
date of the prior application and the national or PCT international 
filing date of the continuation-in-part application.

[57 FR 2034, Jan. 17, 1992, as amended at 65 FR 54666, Sept. 8, 2000]

Sec. 1.57  [Reserved]

Sec. 1.58  Chemical and mathematical formulae and tables.

    (a) The specification, including the claims, may contain chemical 
and mathematical formulas, but shall not contain drawings or flow 
diagrams. The description portion of the specification may contain 
tables; claims may contain tables either if necessary to conform to 35 
U.S.C. 112 or if otherwise found to be desirable.
    (b) Tables that are submitted in electronic form (Secs. 1.96(c) and 
1.821(c)) must maintain the spatial relationships (e.g., columns and 
rows) of the table elements and preserve the information they convey. 
Chemical and mathematical formulae must be encoded to maintain the 
proper positioning of their characters when displayed in order to 
preserve their intended meaning.
    (c) Chemical and mathematical formulae and tables must be presented 
in compliance with Sec. 1.52 (a) and (b), except that chemical and 
mathematical formulae or tables may be placed in a landscape orientation 
if they cannot be presented satisfactorily in a portrait orientation. 
Typewritten characters used in such formulae and tables must be chosen 
from a block (nonscript) type font or lettering style having capital 
letters which are at least 0.21 cm. (0.08 inch) high (e.g., elite type). 
A space at least 0.64 cm. (\1/4\ inch) high should be provided between 
complex formulae and tables and the text. Tables should have the lines 
and columns of data closely spaced to conserve space, consistent with a 
high degree of legibility.


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

[43 FR 20463, May 11, 1978, as amended at 61 FR 42803, Aug. 19, 1996; 65 
FR 54667, Sept. 8, 2000]

Sec. 1.59  Expungement of information or copy of papers in application 
          file.

    (a)(1) Information in an application will not be expunged and 
returned, except as provided in paragraph (b) of this section. See 
Sec. 1.618 for return of unauthorized and improper papers in 
interferences.
    (2) Information forming part of the original disclosure (i.e., 
written specification including the claims, drawings, and any 
preliminary amendment specifically incorporated into an executed oath or 
declaration under Secs. 1.63 and 1.175) will not be expunged from the 
application file.
    (b) An applicant may request that the Office expunge and return 
information, other than what is excluded by

[[Page 52]]

paragraph (a)(2) of this section, by filing a petition under this 
paragraph. Any petition to expunge and return information from an 
application must include the fee set forth in Sec. 1.17(h) and establish 
to the satisfaction of the Commissioner that the return of the 
information is appropriate.
    (c) Upon request by an applicant and payment of the fee specified in 
Sec. 1.19(b), the Office will furnish copies of an application, unless 
the application has been disposed of (see Sec. 1.53 (e), (f) and (g)). 
The Office cannot provide or certify copies of an application that has 
been disposed of.

[62 FR 53188, Oct. 10, 1997, as amended at 65 FR 54667, Sept. 8, 2000]

Secs. 1.60-1.62  [Reserved]

                           Oath or Declaration

Sec. 1.63  Oath or declaration.

    (a) An oath or declaration filed under Sec. 1.51(b)(2) as a part of 
a nonprovisional application must:
    (1) Be executed, i.e., signed, in accordance with either Sec. 1.66 
or Sec. 1.68. There is no minimum age for a person to be qualified to 
sign, but the person must be competent to sign, i.e., understand the 
document that the person is signing;
    (2) Identify each inventor by full name, including the family name, 
and at least one given name without abbreviation together with any other 
given name or initial;
    (3) Identify the country of citizenship of each inventor; and
    (4) State that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor or 
inventors of the subject matter which is claimed and for which a patent 
is sought.
    (b) In addition to meeting the requirements of paragraph (a) of this 
section, the oath or declaration must also:
    (1) Identify the application to which it is directed;
    (2) State that the person making the oath or declaration has 
reviewed and understands the contents of the application, including the 
claims, as amended by any amendment specifically referred to in the oath 
or declaration; and
    (3) State that the person making the oath or declaration 
acknowledges the duty to disclose to the Office all information known to 
the person to be material to patentability as defined in Sec. 1.56.
    (c) Unless such information is supplied on an application data sheet 
in accordance with Sec. 1.76, the oath or declaration must also 
identify:
    (1) The mailing address, and the residence if an inventor lives at a 
location which is different from where the inventor customarily receives 
mail, of each inventor; and
    (2) Any foreign application for patent (or inventor's certificate) 
for which a claim for priority is made pursuant to Sec. 1.55, and any 
foreign application having a filing date before that of the application 
on which priority is claimed, by specifying the application number, 
country, day, month, and year of its filing.
    (d)(1) A newly executed oath or declaration is not required under 
Sec. 1.51(b)(2) and Sec. 1.53(f) in a continuation or divisional 
application, provided that:
    (i) The prior nonprovisional application contained an oath or 
declaration as prescribed by paragraphs (a) through (c) of this section;
    (ii) The continuation or divisional application was filed by all or 
by fewer than all of the inventors named in the prior application;
    (iii) The specification and drawings filed in the continuation or 
divisional application contain no matter that would have been new matter 
in the prior application; and
    (iv) A copy of the executed oath or declaration filed in the prior 
application, showing the signature or an indication thereon that it was 
signed, is submitted for the continuation or divisional application.
    (2) The copy of the executed oath or declaration submitted under 
this paragraph for a continuation or divisional application must be 
accompanied by a statement requesting the deletion of the name or names 
of the person or persons who are not inventors in the continuation or 
divisional application.
    (3) Where the executed oath or declaration of which a copy is 
submitted

[[Page 53]]

for a continuation or divisional application was originally filed in a 
prior application accorded status under Sec. 1.47, the copy of the 
executed oath or declaration for such prior application must be 
accompanied by:
    (i) A copy of the decision granting a petition to accord Sec. 1.47 
status to the prior application, unless all inventors or legal 
representatives have filed an oath or declaration to join in an 
application accorded status under Sec. 1.47 of which the continuation or 
divisional application claims a benefit under 35 U.S.C. 120, 121, or 
365(c); and
    (ii) If one or more inventor(s) or legal representative(s) who 
refused to join in the prior application or could not be found or 
reached has subsequently joined in the prior application or another 
application of which the continuation or divisional application claims a 
benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently 
executed oath(s) or declaration(s) filed by the inventor or legal 
representative to join in the application.
    (4) Where the power of attorney (or authorization of agent) or 
correspondence address was changed during the prosecution of the prior 
application, the change in power of attorney (or authorization of agent) 
or correspondence address must be identified in the continuation or 
divisional application. Otherwise, the Office may not recognize in the 
continuation or divisional application the change of power of attorney 
(or authorization of agent) or correspondence address during the 
prosecution of the prior application.
    (5) A newly executed oath or declaration must be filed in a 
continuation or divisional application naming an inventor not named in 
the prior application.
    (e) A newly executed oath or declaration must be filed in any 
continuation-in-part application, which application may name all, more, 
or fewer than all of the inventors named in the prior application.

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

[48 FR 2711, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 57 
FR 2034, Jan. 17, 1992; 60 FR 20225, Apr. 25, 1995; 62 FR 53188, Oct. 
10, 1997; 65 FR 54667, Sept. 8, 2000]

Sec. 1.64  Person making oath or declaration.

    (a) The oath or declaration (Sec. 1.63), including any supplemental 
oath or declaration (Sec. 1.67), must be made by all of the actual 
inventors except as provided for in Secs. 1.42, 1.43, 1.47, or 
Sec. 1.67.
    (b) If the person making the oath or declaration or any supplemental 
oath or declaration is not the inventor (Secs. 1.42, 1.43, 1.47, or 
Sec. 1.67), the oath or declaration shall state the relationship of the 
person to the inventor, and, upon information and belief, the facts 
which the inventor is required to state. If the person signing the oath 
or declaration is the legal representative of a deceased inventor, the 
oath or declaration shall also state that the person is a legal 
representative and the citizenship, residence, and mailing address of 
the legal representative.

[65 FR 54667, Sept. 8, 2000]

Sec. 1.66  Officers authorized to administer oaths.

    (a) The oath or affirmation may be made before any person within the 
United States authorized by law to administer oaths. An oath made in a 
foreign country may be made before any diplomatic or consular officer of 
the United States authorized to administer oaths, or before any officer 
having an official seal and authorized to administer oaths in the 
foreign country in which the applicant may be, whose authority shall be 
proved by a certificate of a diplomatic or consular officer of the 
United States, or by an apostille of an official designated by a foreign 
country which, by treaty or convention, accords like effect to 
apostilles of designated officials in the United States. The oath shall 
be attested in all cases in this and other countries, by the proper 
official seal of the officer before whom the oath or affirmation is 
made. Such oath or affirmation shall be valid as to execution if it 
complies with the laws of the State or country where made. When the 
person before whom the oath or affirmation is made in this country is 
not provided with a seal, his official character shall be established by 
competent evidence, as by a certificate from a clerk of a court of

[[Page 54]]

record or other proper officer having a seal.
    (b) When the oath is taken before an officer in a country foreign to 
the United States, any accompanying application papers, except the 
drawings, must be attached together with the oath and a ribbon passed 
one or more times through all the sheets of the application, except the 
drawings, and the ends of said ribbon brought together under the seal 
before the latter is affixed and impressed, or each sheet must be 
impressed with the official seal of the officer before whom the oath is 
taken. If the papers as filed are not properly ribboned or each sheet 
impressed with the seal, the case will be accepted for examination, but 
before it is allowed, duplicate papers, prepared in compliance with the 
foregoing sentence, must be filed.

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

[47 FR 41275, Sept. 17, 1982]

Sec. 1.67  Supplemental oath or declaration.

    (a) The Office may require, or inventors and applicants may submit, 
a supplemental oath or declaration meeting the requirements of Sec. 1.63 
or Sec. 1.162 to correct any deficiencies or inaccuracies present in the 
earlier filed oath or declaration.
    (1) Deficiencies or inaccuracies relating to all the inventors or 
applicants (Secs. 1.42, 1.43, or Sec. 1.47) may be corrected with a 
supplemental oath or declaration signed by all the inventors or 
applicants.
    (2) Deficiencies or inaccuracies relating to fewer than all of the 
inventor(s) or applicant(s) (Secs. 1.42, 1.43 or Sec. 1.47) may be 
corrected with a supplemental oath or declaration identifying the entire 
inventive entity but signed only by the inventor(s) or applicant(s) to 
whom the error or deficiency relates.
    (3) Deficiencies or inaccuracies due to the failure to meet the 
requirements of Sec. 1.63(c) (e.g., to correct the omission of a mailing 
address of an inventor) in an oath or declaration may be corrected with 
an application data sheet in accordance with Sec. 1.76.
    (4) Submission of a supplemental oath or declaration or an 
application data sheet (Sec. 1.76), as opposed to who must sign the 
supplemental oath or declaration or an application data sheet, is 
governed by Sec. 1.33(a)(2) and paragraph (b) of this section.
    (b) A supplemental oath or declaration meeting the requirements of 
Sec. 1.63 must be filed when a claim is presented for matter originally 
shown or described but not substantially embraced in the statement of 
invention or claims originally presented or when an oath or declaration 
submitted in accordance with Sec. 1.53(f) after the filing of the 
specification and any required drawings specifically and improperly 
refers to an amendment which includes new matter. No new matter may be 
introduced into a nonprovisional application after its filing date even 
if a supplemental oath or declaration is filed. In proper situations, 
the oath or declaration here required may be made on information and 
belief by an applicant other than the inventor.
    (c) [Reserved]

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

[48 FR 2711, Jan. 20, 1983, as amended at 57 FR 2034, Jan. 17, 1992; 60 
FR 20225, Apr. 25, 1995; 62 FR 53189, Oct. 10, 1997; 65 FR 54667, Sept. 
8, 2000]

Sec. 1.68  Declaration in lieu of oath.

    Any document to be filed in the Patent and Trademark Office and 
which is required by any law, rule, or other regulation to be under oath 
may be subscribed to by a written declaration. Such declaration may be 
used in lieu of the oath otherwise required, if, and only if, the 
declarant is on the same document, warned that willful false statements 
and the like are punishable by fine or imprisonment, or both (18 U.S.C. 
1001) and may jeopardize the validity of the application or any patent 
issuing thereon. The declarant must set forth in the body of the 
declaration that all statements made of the declarant's own knowledge 
are true and that all statements made on information and belief are 
believed to be true.

[49 FR 48452, Dec. 12, 1984]

Sec. 1.69  Foreign language oaths and declarations.

    (a) Whenever an individual making an oath or declaration cannot 
understand English, the oath or declaration

[[Page 55]]

must be in a language that such individual can understand and shall 
state that such individual understands the content of any documents to 
which the oath or declaration relates.
    (b) Unless the text of any oath or declaration in a language other 
than English is a form provided or approved by the Patent and Trademark 
Office, it must be accompanied by an English translation together with a 
statement that the translation is accurate, except that in the case of 
an oath or declaration filed under Sec. 1.63, the translation may be 
filed in the Office no later than two months from the date applicant is 
notified to file the translation.

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

[42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2711, Jan. 20, 1983; 62 
FR 53189, Oct. 10, 1997]

Sec. 1.70  [Reserved]

                              Specification

    Authority: Secs. 1.71 to 1.79 also issued under 35 U.S.C. 112.

Sec. 1.71  Detailed description and specification of the invention.

    (a) The specification must include a written description of the 
invention or discovery and of the manner and process of making and using 
the same, and is required to be in such full, clear, concise, and exact 
terms as to enable any person skilled in the art or science to which the 
invention or discovery appertains, or with which it is most nearly 
connected, to make and use the same.
    (b) The specification must set forth the precise invention for which 
a patent is solicited, in such manner as to distinguish it from other 
inventions and from what is old. It must describe completely a specific 
embodiment of the process, machine, manufacture, composition of matter 
or improvement invented, and must explain the mode of operation or 
principle whenever applicable. The best mode contemplated by the 
inventor of carrying out his invention must be set forth.
    (c) In the case of an improvement, the specification must 
particularly point out the part or parts of the process, machine, 
manufacture, or composition of matter to which the improvement relates, 
and the description should be confined to the specific improvement and 
to such parts as necessarily cooperate with it or as may be necessary to 
a complete understanding or description of it.
    (d) A copyright or mask work notice may be placed in a design or 
utility patent application adjacent to copyright and mask work material 
contained therein. The notice may appear at any appropriate portion of 
the patent application disclosure. For notices in drawings, see 
Sec. 1.84(s). The content of the notice must be limited to only those 
elements provided for by law. For example, ``<SUP><greek-l></SUP>1983 
John Doe'' (17 U.S.C. 401) and `` *M* John Doe'' (17 U.S.C. 909) would 
be properly limited and, under current statutes, legally sufficient 
notices of copyright and mask work, respectively. Inclusion of a 
copyright or mask work notice will be permitted only if the 
authorization language set forth in paragraph (e) of this section is 
included at the beginning (preferably as the first paragraph) of the 
specification.
    (e) The authorization shall read as follows:

    A portion of the disclosure of this patent document contains 
material which is subject to (copyright or mask work) protection. The 
(copyright or mask work) owner has no objection to the facsimile 
reproduction by anyone of the patent document or the patent disclosure, 
as it appears in the Patent and Trademark Office patent file or records, 
but otherwise reserves all (copyright or mask work) rights whatsoever.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988; 
58 FR 38723, July 20, 1993]

Sec. 1.72  Title and abstract.

    (a) The title of the invention may not exceed 500 characters in 
length and must be as short and specific as possible. Characters that 
cannot be captured and recorded in the Office's automated information 
systems may not be reflected in the Office's records in such systems or 
in documents created by the Office. Unless the title is supplied in an 
application data sheet (Sec. 1.76), the title of the invention should 
appear as a heading on the first page of the specification.

[[Page 56]]

    (b) A brief abstract of the technical disclosure in the 
specification must commence on a separate sheet, preferably following 
the claims, under the heading ``Abstract'' or ``Abstract of the 
Disclosure.'' The abstract in an application filed under 35 U.S.C. 111 
may not exceed 150 words in length. The purpose of the abstract is to 
enable the United States Patent and Trademark Office and the public 
generally to determine quickly from a cursory inspection the nature and 
gist of the technical disclosure. The abstract will not be used for 
interpreting the scope of the claims.

[65 FR 54667, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000]

Sec. 1.73  Summary of the invention.

    A brief summary of the invention indicating its nature and 
substance, which may include a statement of the object of the invention, 
should precede the detailed description. Such summary should, when set 
forth, be commensurate with the invention as claimed and any object 
recited should be that of the invention as claimed.

Sec. 1.74  Reference to drawings.

    When there are drawings, there shall be a brief description of the 
several views of the drawings and the detailed description of the 
invention shall refer to the different views by specifying the numbers 
of the figures and to the different parts by use of reference letters or 
numerals (preferably the latter).

Sec. 1.75  Claim(s).

    (a) The specification must conclude with a claim particularly 
pointing out and distinctly claiming the subject matter which the 
applicant regards as his invention or discovery.
    (b) More than one claim may be presented provided they differ 
substantially from each other and are not unduly multiplied.
    (c) One or more claims may be presented in dependent form, referring 
back to and further limiting another claim or claims in the same 
application. Any dependent claim which refers to more than one other 
claim (``multiple dependent claim'') shall refer to such other claims in 
the alternative only. A multiple dependent claim shall not serve as a 
basis for any other multiple dependent claim. For fee calculation 
purposes under Sec. 1.16, a multiple dependent claim will be considered 
to be that number of claims to which direct reference is made therein. 
For fee calculation purposes, also, any claim depending from a multiple 
dependent claim will be considered to be that number of claims to which 
direct reference is made in that multiple dependent claim. In addition 
to the other filing fees, any original application which is filed with, 
or is amended to include, multiple dependent claims must have paid 
therein the fee set forth in Sec. 1.16(d). Claims in dependent form 
shall be construed to include all the limitations of the claim 
incorporated by reference into the dependent claim. A multiple dependent 
claim shall be construed to incorporate by reference all the limitations 
of each of the particular claims in relation to which it is being 
considered.
    (d)(1) The claim or claims must conform to the invention as set 
forth in the remainder of the specification and the terms and phrases 
used in the claims must find clear support or antecedent basis in the 
description so that the meaning of the terms in the claims may be 
ascertainable by reference to the description. (See Sec. 1.58(a).)
    (2) See Secs. 1.141 to 1.146 as to claiming different inventions in 
one application.
    (e) Where the nature of the case admits, as in the case of an 
improvement, any independent claim should contain in the following 
order:
    (1) A preamble comprising a general description of all the elements 
or steps of the claimed combination which are conventional or known,
    (2) A phrase such as ``wherein the improvement comprises,'' and
    (3) Those elements, steps and/or relationships which constitute that 
portion of the claimed combination which the applicant considers as the 
new or improved portion.
    (f) If there are several claims, they shall be numbered 
consecutively in Arabic numerals.
    (g) The least restrictive claim should be presented as claim number 
1, and all dependent claims should be grouped together with the claim or 
claims to which they refer to the extent practicable.

[[Page 57]]

    (h) The claim or claims must commence on a separate sheet.
    (i) Where a claim sets forth a plurality of elements or steps, each 
element or step of the claim should be separated by a line indentation.

(35 U.S.C. 6; 15 U.S.C. 1113, 1126)

[31 FR 12922, Oct. 4, 1966, as amended at 36 FR 12690, July 3, 1971; 37 
FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept. 
17, 1982; 61 FR 42803, Aug. 19, 1996]

Sec. 1.76  Application data sheet.

    (a) Application data sheet. An application data sheet is a sheet or 
sheets, that may be voluntarily submitted in either provisional or 
nonprovisional applications, which contains bibliographic data, arranged 
in a format specified by the Office. If an application data sheet is 
provided, the application data sheet is part of the provisional or 
nonprovisional application for which it has been submitted.
    (b) Bibliographic data. Bibliographic data as used in paragraph (a) 
of this section includes:
    (1) Applicant information. This information includes the name, 
residence, mailing address, and citizenship of each applicant 
(Sec. 1.41(b)). The name of each applicant must include the family name, 
and at least one given name without abbreviation together with any other 
given name or initial. If the applicant is not an inventor, this 
information also includes the applicant's authority (Secs. 1.42, 1.43, 
and 1.47) to apply for the patent on behalf of the inventor.
    (2) Correspondence information. This information includes the 
correspondence address, which may be indicated by reference to a 
customer number, to which correspondence is to be directed (see 
Sec. 1.33(a)).
    (3) Application information. This information includes the title of 
the invention, a suggested classification, by class and subclass, the 
Technology Center to which the subject matter of the invention is 
assigned, the total number of drawing sheets, a suggested drawing figure 
for publication (in a nonprovisional application), any docket number 
assigned to the application, the type of application (e.g., utility, 
plant, design, reissue, provisional), whether the application discloses 
any significant part of the subject matter of an application under a 
secrecy order pursuant to Sec. 5.2 of this chapter (see Sec. 5.2(c)), 
and, for plant applications, the Latin name of the genus and species of 
the plant claimed, as well as the variety denomination. The suggested 
classification and Technology Center information should be supplied for 
provisional applications whether or not claims are present. If claims 
are not present in a provisional application, the suggested 
classification and Technology Center should be based upon the 
disclosure.
    (4) Representative information. This information includes the 
registration number of each practitioner having a power of attorney or 
authorization of agent in the application (preferably by reference to a 
customer number). Providing this information in the application data 
sheet does not constitute a power of attorney or authorization of agent 
in the application (see Sec. 1.34(b)).
    (5) Domestic priority information. This information includes the 
application number, the filing date, the status (including patent number 
if available), and relationship of each application for which a benefit 
is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this 
information in the application data sheet constitutes the specific 
reference required by 35 U.S.C. 119(e) or 120, and Sec. 1.78(a)(2) or 
Sec. 1.78(a)(4), and need not otherwise be made part of the 
specification.
    (6) Foreign priority information. This information includes the 
application number, country, and filing date of each foreign application 
for which priority is claimed, as well as any foreign application having 
a filing date before that of the application for which priority is 
claimed. Providing this information in the application data sheet 
constitutes the claim for priority as required by 35 U.S.C. 119(b) and 
Sec. 1.55(a).
    (7) Assignee information. This information includes the name (either 
person or juristic entity) and address of the assignee of the entire 
right, title, and interest in an application. Providing this information 
in the application data sheet does not substitute for compliance with 
any requirement of part 3 of this chapter to have an assignment recorded 
by the Office.

[[Page 58]]

    (c) Supplemental application data sheets. Supplemental application 
data sheets:
    (1) May be subsequently supplied prior to payment of the issue fee 
either to correct or update information in a previously submitted 
application data sheet, or an oath or declaration under Sec. 1.63 or 
Sec. 1.67, except that inventorship changes are governed by Sec. 1.48, 
correspondence changes are governed by Sec. 1.33(a), and citizenship 
changes are governed by Sec. 1.63 or Sec. 1.67; and
    (2) Should identify the information that is being changed (added, 
deleted, or modified) and therefore need not contain all the previously 
submitted information that has not changed.
    (d) Inconsistencies between application data sheet and oath or 
declaration. For inconsistencies between information that is supplied by 
both an application data sheet under this section and by an oath or 
declaration under Secs. 1.63 and 1.67:
    (1) The latest submitted information will govern notwithstanding 
whether supplied by an application data sheet, or by a Sec. 1.63 or 
Sec. 1.67 oath or declaration, except as provided by paragraph (d)(3) of 
this section;
    (2) The information in the application data sheet will govern when 
the inconsistent information is supplied at the same time by a Sec. 1.63 
or Sec. 1.67 oath or declaration, except as provided by paragraph (d)(3) 
of this section;
    (3) The oath or declaration under Sec. 1.63 or Sec. 1.67 governs 
inconsistencies with the application data sheet in the naming of 
inventors (Sec. 1.41(a)(1)) and setting forth their citizenship (35 
U.S.C. 115);
    (4) The Office will initially capture bibliographic information from 
the application data sheet (notwithstanding whether an oath or 
declaration governs the information). Thus, the Office shall generally 
not look to an oath or declaration under Sec. 1.63 to see if the 
bibliographic information contained therein is consistent with the 
bibliographic information captured from an application data sheet 
(whether the oath or declaration is submitted prior to or subsequent to 
the application data sheet). Captured bibliographic information derived 
from an application data sheet containing errors may be recaptured by a 
request therefor and the submission of a supplemental application data 
sheet, an oath or declaration under Sec. 1.63 or Sec. 1.67, or a letter 
pursuant to Sec. 1.33(b).

[65 FR 54668, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000]

Sec. 1.77  Arrangement of application elements.

    (a) The elements of the application, if applicable, should appear in 
the following order:
    (1) Utility application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings.
    (6) Executed oath or declaration.
    (b) The specification should include the following sections in 
order:
    (1) Title of the invention, which may be accompanied by an 
introductory portion stating the name, citizenship, and residence of the 
applicant (unless included in the application data sheet).
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Reference to a ``Sequence Listing,'' a table, or a computer 
program listing appendix submitted on a compact disc and an 
incorporation-by-reference of the material on the compact disc (see 
Sec. 1.52(e)(5)). The total number of compact discs including duplicates 
and the files on each compact disc shall be specified.
    (5) Background of the invention.
    (6) Brief summary of the invention.
    (7) Brief description of the several views of the drawing.
    (8) Detailed description of the invention.
    (9) A claim or claims.
    (10) Abstract of the disclosure.
    (11) ``Sequence Listing,'' if on paper (see Secs. 1.821 through 
1.825).
    (c) The text of the specification sections defined in paragraphs 
(b)(1) through (b)(11) of this section, if applicable, should be 
preceded by a section heading in uppercase and without underlining or 
bold type.

[65 FR 54668, Sept. 8, 2000]

[[Page 59]]

Sec. 1.78  Claiming benefit of earlier filing date and cross-references 
          to other applications.

    (a)(1) A nonprovisional application may claim an invention disclosed 
in one or more prior filed copending nonprovisional applications or 
copending international applications designating the United States of 
America. In order for a nonprovisional application to claim the benefit 
of a prior filed copending nonprovisional application or copending 
international application designating the United States of America, each 
prior application must name as an inventor at least one inventor named 
in the later filed nonprovisional application and disclose the named 
inventor's invention claimed in at least one claim of the later filed 
nonprovisional application in the manner provided by the first paragraph 
of 35 U.S.C. 112. In addition, each prior application must be:
    (i) An international application entitled to a filing date in 
accordance with PCT Article 11 and designating the United States of 
America; or
    (ii) Complete as set forth in Sec. 1.51(b); or
    (iii) Entitled to a filing date as set forth in Sec. 1.53(b) or 
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16; or
    (iv) Entitled to a filing date as set forth in Sec. 1.53(b) and have 
paid therein the processing and retention fee set forth in Sec. 1.21(l) 
within the time period set forth in Sec. 1.53(f).
    (2) Except for a continued prosecution application filed under 
Sec. 1.53(d), any nonprovisional application claiming the benefit of one 
or more prior filed copending nonprovisional applications or 
international applications designating the United States of America must 
contain a reference to each such prior application, identifying it by 
application number (consisting of the series code and serial number) or 
international application number and international filing date and 
indicating the relationship of the applications. This reference must be 
submitted during the pendency of the application, and within the later 
of four months from the actual filing date of the application or sixteen 
months from the filing date of the prior application. This time period 
is not extendable. Unless the reference required by this paragraph is 
included in an application data sheet (Sec. 1.76), the specification 
must contain or be amended to contain such reference in the first 
sentence following the title. If the application claims the benefit of 
an international application, the first sentence of the specification 
must include an indication of whether the international application was 
published under PCT Article 21(2) in English (regardless of whether 
benefit for such application is claimed in the application data sheet). 
The request for a continued prosecution application under Sec. 1.53(d) 
is the specific reference required by 35 U.S.C. 120 to the prior 
application. The identification of an application by application number 
under this section is the specific reference required by 35 U.S.C. 120 
to every application assigned that application number. Cross references 
to other related applications may be made when appropriate (see 
Sec. 1.14). Except as provided in paragraph (a)(3) of this section, the 
failure to timely submit the reference required by 35 U.S.C. 120 and 
this paragraph is considered a waiver of any benefit under 35 U.S.C. 
120, 121, or 365(c) to such prior application. The time period set forth 
in this paragraph does not apply to an application for a design patent.
    (3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) 
of this section is presented in a nonprovisional application after the 
time period provided by paragraph (a)(2) of this section, the claim 
under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior filed 
copending nonprovisional application or international application 
designating the United States of America may be accepted if the 
reference identifying the prior application by application number or 
international application number and international filing date was 
unintentionally delayed. A petition to accept an unintentionally delayed 
claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior 
filed application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(t); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(2) of this section and the date the claim 
was filed was

[[Page 60]]

unintentional. The Commissioner may require additional information where 
there is a question whether the delay was unintentional.
    (4) A nonprovisional application other than for a design patent may 
claim an invention disclosed in one or more prior filed provisional 
applications. In order for a nonprovisional application to claim the 
benefit of one or more prior filed provisional applications, each prior 
provisional application must name as an inventor at least one inventor 
named in the later filed nonprovisional application and disclose the 
named inventor's invention claimed in at least one claim of the later 
filed nonprovisional application in the manner provided by the first 
paragraph of 35 U.S.C. 112. In addition, each prior provisional 
application must be entitled to a filing date as set forth in 
Sec. 1.53(c), and the basic filing fee set forth in Sec. 1.16(k) must be 
paid within the time period set forth in Sec. 1.53(g).
    (5) Any nonprovisional application claiming the benefit of one or 
more prior filed copending provisional applications must contain a 
reference to each such prior provisional application, identifying it as 
a provisional application, and including the provisional application 
number (consisting of series code and serial number), and, if the 
provisional application is filed in a language other than English, an 
English language translation of the non-English language provisional 
application and a statement that the translation is accurate. This 
reference and English language translation of a non-English language 
provisional application must be submitted during the pendency of the 
nonprovisional application, and within the later of four months from the 
actual filing date of the nonprovisional application or sixteen months 
from the filing date of the prior provisional application. This time 
period is not extendable. Unless the reference required by this 
paragraph is included in an application data sheet (Sec. 1.76), the 
specification must contain or be amended to contain such reference in 
the first sentence following the title. Except as provided in paragraph 
(a)(6) of this section, the failure to timely submit the reference and 
English language translation of a non-English language provisional 
application required by 35 U.S.C. 119(e) and this paragraph is 
considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior 
provisional application.
    (6) If the reference or English language translation of a non-
English language provisional application required by 35 U.S.C. 119(e) 
and paragraph (a)(5) of this section is presented in a nonprovisional 
application after the time period provided by paragraph (a)(5) of this 
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior 
filed provisional application may be accepted during the pendency of the 
nonprovisional application if the reference identifying the prior 
application by provisional application number and any English language 
translation of a non-English language provisional application were 
unintentionally delayed. A petition to accept an unintentionally delayed 
claim under 35 U.S.C. 119(e) for the benefit of a prior filed 
provisional application must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(t); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(5) of this section and the date the claim 
was filed was unintentional. The Commissioner may require additional 
information where there is a question whether the delay was 
unintentional.
    (b) Where two or more applications filed by the same applicant 
contain conflicting claims, elimination of such claims from all but one 
application may be required in the absence of good and sufficient reason 
for their retention during pendency in more than one application.
    (c) If an application or a patent under reexamination and at least 
one other application naming different inventors are owned by the same 
party and contain conflicting claims, and there is no statement of 
record indicating that the claimed inventions were commonly owned or 
subject to an obligation of assignment to the same person at the time 
the later invention was made, the Office may require the assignee to 
state whether the claimed inventions were commonly owned or subject to 
an obligation of assignment to the same

[[Page 61]]

person at the time the later invention was made, and, if not, indicate 
which named inventor is the prior inventor.

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

[36 FR 7312, Apr. 17, 1971, as amended at 50 FR 9380, Mar. 7, 1985; 50 
FR 11366, Mar. 21, 1985; 58 FR 54509, Oct. 22, 1993; 60 FR 20225, Apr. 
25, 1995; 61 FR 42804, Aug. 19, 1996; 62 FR 53189, Oct. 10, 1997; 65 FR 
14872, Mar. 20, 2000; 65 FR 54669, Sept. 8, 2000; 65 FR 57054, Sept. 20, 
2000]

Sec. 1.79  Reservation clauses not permitted.

    A reservation for a future application of subject matter disclosed 
but not claimed in a pending application will not be permitted in the 
pending application, but an application disclosing unclaimed subject 
matter may contain a reference to a later filed application of the same 
applicant or owned by a common assignee disclosing and claiming that 
subject matter.

                              The Drawings

    Authority: Secs. 1.81 to 1.88 also issued under 35 U.S.C. 113.

Sec. 1.81  Drawings required in patent application.

    (a) The applicant for a patent is required to furnish a drawing of 
his or her invention where necessary for the understanding of the 
subject matter sought to be patented; this drawing, or a high quality 
copy thereof, must be filed with the application. Since corrections are 
the responsibility of the applicant, the original drawing(s) should be 
retained by the applicant for any necessary future correction.
    (b) Drawings may include illustrations which facilitate an 
understanding of the invention (for example, flow sheets in cases of 
processes, and diagrammatic views).
    (c) Whenever the nature of the subject matter sought to be patented 
admits of illustration by a drawing without its being necessary for the 
understanding of the subject matter and the applicant has not furnished 
such a drawing, the examiner will require its submission within a time 
period of not less than two months from the date of the sending of a 
notice thereof.
    (d) Drawings submitted after the filing date of the application may 
not be used to overcome any insufficiency of the specification due to 
lack of an enabling disclosure or otherwise inadequate disclosure 
therein, or to supplement the original disclosure thereof for the 
purpose of interpretation of the scope of any claim.

[43 FR 4015, Jan. 31, 1978, as amended at 53 FR 47808, Nov. 28, 1988]

Sec. 1.83  Content of drawing.

    (a) The drawing in a nonprovisional application must show every 
feature of the invention specified in the claims. However, conventional 
features disclosed in the description and claims, where their detailed 
illustration is not essential for a proper understanding of the 
invention, should be illustrated in the drawing in the form of a 
graphical drawing symbol or a labeled representation (e.g., a labeled 
rectangular box).
    (b) When the invention consists of an improvement on an old machine 
the drawing must when possible exhibit, in one or more views, the 
improved portion itself, disconnected from the old structure, and also 
in another view, so much only of the old structure as will suffice to 
show the connection of the invention therewith.
    (c) Where the drawings in a nonprovisional application do not comply 
with the requirements of paragraphs (a) and (b) of this section, the 
examiner shall require such additional illustration within a time period 
of not less than two months from the date of the sending of a notice 
thereof. Such corrections are subject to the requirements of 
Sec. 1.81(d).

[31 FR 12923, Oct. 4, 1966, as amended at 43 FR 4015, Jan. 31, 1978; 60 
FR 20226, Apr. 25, 1995]

Sec. 1.84  Standards for drawings.

    (a) Drawings. There are two acceptable categories for presenting 
drawings in utility and design patent applications.
    (1) Black ink. Black and white drawings are normally required. India 
ink, or its equivalent that secures solid black lines, must be used for 
drawings; or
    (2) Color. On rare occasions, color drawings may be necessary as the 
only

[[Page 62]]

practical medium by which to disclose the subject matter sought to be 
patented in a utility or design patent application or the subject matter 
of a statutory invention registration. The color drawings must be of 
sufficient quality such that all details in the drawings are 
reproducible in black and white in the printed patent. Color drawings 
are not permitted in international applications (see PCT Rule 11.13), or 
in an application, or copy thereof, submitted under the Office 
electronic filing system. The Office will accept color drawings in 
utility or design patent applications and statutory invention 
registrations only after granting a petition filed under this paragraph 
explaining why the color drawings are necessary. Any such petition must 
include the following:
    (i) The fee set forth in Sec. 1.17(h);
    (ii) Three (3) sets of color drawings;
    (iii) A black and white photocopy that accurately depicts, to the 
extent possible, the subject matter shown in the color drawing; and
    (iv) An amendment to the specification to insert (unless the 
specification contains or has been previously amended to contain) the 
following language as the first paragraph of the brief description of 
the drawings:

    The patent or application file contains at least one drawing 
executed in color. Copies of this patent or patent application 
publication with color drawing(s) will be provided by the Office upon 
request and payment of the necessary fee.

    (b) Photographs.--(1) Black and white. Photographs, including 
photocopies of photographs, are not ordinarily permitted in utility and 
design patent applications. The Office will accept photographs in 
utility and design patent applications, however, if photographs are the 
only practicable medium for illustrating the claimed invention. For 
example, photographs or photomicrographs of: electrophoresis gels, blots 
(e.g., immunological, western, Southern, and northern), autoradiographs, 
cell cultures (stained and unstained), histological tissue cross 
sections (stained and unstained), animals, plants, in vivo imaging, thin 
layer chromatography plates, crystalline structures, and, in a design 
patent application, ornamental effects, are acceptable. If the subject 
matter of the application admits of illustration by a drawing, the 
examiner may require a drawing in place of the photograph. The 
photographs must be of sufficient quality so that all details in the 
photographs are reproducible in the printed patent.
    (2) Color photographs. Color photographs will be accepted in utility 
and design patent applications if the conditions for accepting color 
drawings and black and white photographs have been satisfied. See 
paragraphs (a)(2) and (b)(1) of this section.
    (c) Identification of drawings. Identifying indicia, if provided, 
should include the title of the invention, inventor's name, and 
application number, or docket number (if any) if an application number 
has not been assigned to the application. If this information is 
provided, it must be placed on the front of each sheet and centered 
within the top margin.
    (d) Graphic forms in drawings. Chemical or mathematical formulae, 
tables, and waveforms may be submitted as drawings, and are subject to 
the same requirements as drawings. Each chemical or mathematical formula 
must be labeled as a separate figure, using brackets when necessary, to 
show that information is properly integrated. Each group of waveforms 
must be presented as a single figure, using a common vertical axis with 
time extending along the horizontal axis. Each individual waveform 
discussed in the specification must be identified with a separate letter 
designation adjacent to the vertical axis.
    (e) Type of paper. Drawings submitted to the Office must be made on 
paper which is flexible, strong, white, smooth, non-shiny, and durable. 
All sheets must be reasonably free from cracks, creases, and folds. Only 
one side of the sheet may be used for the drawing. Each sheet must be 
reasonably free from erasures and must be free from alterations, 
overwritings, and interlineations. Photographs must be developed on 
paper meeting the sheet-size requirements of paragraph (f) of this 
section and the margin requirements of paragraph (g) of this section. 
See paragraph (b) of this section for other requirements for 
photographs.

[[Page 63]]

    (f) Size of paper. All drawing sheets in an application must be the 
same size. One of the shorter sides of the sheet is regarded as its top. 
The size of the sheets on which drawings are made must be:
    (1) 21.0 cm. by 29.7 cm. (DIN size A4), or
    (2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).
    (g) Margins. The sheets must not contain frames around the sight 
(i.e., the usable surface), but should have scan target points (i.e., 
cross-hairs) printed on two catercorner margin corners. Each sheet must 
include a top margin of at least 2.5 cm. (1 inch), a left side margin of 
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (\5/
8\ inch), and a bottom margin of at least 1.0 cm. (\3/8\ inch), thereby 
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7 
cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm. 
by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\ 
by 11 inch) drawing sheets.
    (h) Views. The drawing must contain as many views as necessary to 
show the invention. The views may be plan, elevation, section, or 
perspective views. Detail views of portions of elements, on a larger 
scale if necessary, may also be used. All views of the drawing must be 
grouped together and arranged on the sheet(s) without wasting space, 
preferably in an upright position, clearly separated from one another, 
and must not be included in the sheets containing the specifications, 
claims, or abstract. Views must not be connected by projection lines and 
must not contain center lines. Waveforms of electrical signals may be 
connected by dashed lines to show the relative timing of the waveforms.
    (1) Exploded views. Exploded views, with the separated parts 
embraced by a bracket, to show the relationship or order of assembly of 
various parts are permissible. When an exploded view is shown in a 
figure which is on the same sheet as another figure, the exploded view 
should be placed in brackets.
    (2) Partial views. When necessary, a view of a large machine or 
device in its entirety may be broken into partial views on a single 
sheet, or extended over several sheets if there is no loss in facility 
of understanding the view. Partial views drawn on separate sheets must 
always be capable of being linked edge to edge so that no partial view 
contains parts of another partial view. A smaller scale view should be 
included showing the whole formed by the partial views and indicating 
the positions of the parts shown. When a portion of a view is enlarged 
for magnification purposes, the view and the enlarged view must each be 
labeled as separate views.
    (i) Where views on two or more sheets form, in effect, a single 
complete view, the views on the several sheets must be so arranged that 
the complete figure can be assembled without concealing any part of any 
of the views appearing on the various sheets.
    (ii) A very long view may be divided into several parts placed one 
above the other on a single sheet. However, the relationship between the 
different parts must be clear and unambiguous.
    (3) Sectional views. The plane upon which a sectional view is taken 
should be indicated on the view from which the section is cut by a 
broken line. The ends of the broken line should be designated by Arabic 
or Roman numerals corresponding to the view number of the sectional 
view, and should have arrows to indicate the direction of sight. 
Hatching must be used to indicate section portions of an object, and 
must be made by regularly spaced oblique parallel lines spaced 
sufficiently apart to enable the lines to be distinguished without 
difficulty. Hatching should not impede the clear reading of the 
reference characters and lead lines. If it is not possible to place 
reference characters outside the hatched area, the hatching may be 
broken off wherever reference characters are inserted. Hatching must be 
at a substantial angle to the surrounding axes or principal lines, 
preferably 45 deg.. A cross section must be set out and drawn to show 
all of the materials as they are shown in the view from which the cross 
section was taken. The parts in cross section must show proper 
material(s) by hatching with regularly spaced parallel oblique strokes, 
the space between strokes being chosen on the basis of the total area to 
be hatched. The various parts of a cross section of the same item should 
be hatched in the

[[Page 64]]

same manner and should accurately and graphically indicate the nature of 
the material(s) that is illustrated in cross section. The hatching of 
juxtaposed different elements must be angled in a different way. In the 
case of large areas, hatching may be confined to an edging drawn around 
the entire inside of the outline of the area to be hatched. Different 
types of hatching should have different conventional meanings as regards 
the nature of a material seen in cross section.
    (4) Alternate position. A moved position may be shown by a broken 
line superimposed upon a suitable view if this can be done without 
crowding; otherwise, a separate view must be used for this purpose.
    (5) Modified forms. Modified forms of construction must be shown in 
separate views.
    (i) Arrangement of views. One view must not be placed upon another 
or within the outline of another. All views on the same sheet should 
stand in the same direction and, if possible, stand so that they can be 
read with the sheet held in an upright position. If views wider than the 
width of the sheet are necessary for the clearest illustration of the 
invention, the sheet may be turned on its side so that the top of the 
sheet, with the appropriate top margin to be used as the heading space, 
is on the right-hand side. Words must appear in a horizontal, left-to-
right fashion when the page is either upright or turned so that the top 
becomes the right side, except for graphs utilizing standard scientific 
convention to denote the axis of abscissas (of X) and the axis of 
ordinates (of Y).
    (j) Front page view. The drawing must contain as many views as 
necessary to show the invention. One of the views should be suitable for 
inclusion on the front page of the patent application publication and 
patent as the illustration of the invention. Views must not be connected 
by projection lines and must not contain center lines. Applicant may 
suggest a single view (by figure number) for inclusion on the front page 
of the patent application publication and patent.
    (k) Scale. The scale to which a drawing is made must be large enough 
to show the mechanism without crowding when the drawing is reduced in 
size to two-thirds in reproduction. Indications such as ``actual size'' 
or ``scale \1/2\'' on the drawings are not permitted since these lose 
their meaning with reproduction in a different format.
    (l) Character of lines, numbers, and letters. All drawings must be 
made by a process which will give them satisfactory reproduction 
characteristics. Every line, number, and letter must be durable, clean, 
black (except for color drawings), sufficiently dense and dark, and 
uniformly thick and well-defined. The weight of all lines and letters 
must be heavy enough to permit adequate reproduction. This requirement 
applies to all lines however fine, to shading, and to lines representing 
cut surfaces in sectional views. Lines and strokes of different 
thicknesses may be used in the same drawing where different thicknesses 
have a different meaning.
    (m) Shading. The use of shading in views is encouraged if it aids in 
understanding the invention and if it does not reduce legibility. 
Shading is used to indicate the surface or shape of spherical, 
cylindrical, and conical elements of an object. Flat parts may also be 
lightly shaded. Such shading is preferred in the case of parts shown in 
perspective, but not for cross sections. See paragraph (h)(3) of this 
section. Spaced lines for shading are preferred. These lines must be 
thin, as few in number as practicable, and they must contrast with the 
rest of the drawings. As a substitute for shading, heavy lines on the 
shade side of objects can be used except where they superimpose on each 
other or obscure reference characters. Light should come from the upper 
left corner at an angle of 45 deg.. Surface delineations should 
preferably be shown by proper shading. Solid black shading areas are not 
permitted, except when used to represent bar graphs or color.
    (n) Symbols. Graphical drawing symbols may be used for conventional 
elements when appropriate. The elements for which such symbols and 
labeled representations are used must be adequately identified in the 
specification. Known devices should be illustrated by symbols which have 
a universally recognized conventional meaning and are generally accepted 
in the art. Other

[[Page 65]]

symbols which are not universally recognized may be used, subject to 
approval by the Office, if they are not likely to be confused with 
existing conventional symbols, and if they are readily identifiable.
    (o) Legends. Suitable descriptive legends may be used subject to 
approval by the Office, or may be required by the examiner where 
necessary for understanding of the drawing. They should contain as few 
words as possible.
    (p) Numbers, letters, and reference characters. (1) Reference 
characters (numerals are preferred), sheet numbers, and view numbers 
must be plain and legible, and must not be used in association with 
brackets or inverted commas, or enclosed within outlines, e.g., 
encircled. They must be oriented in the same direction as the view so as 
to avoid having to rotate the sheet. Reference characters should be 
arranged to follow the profile of the object depicted.
    (2) The English alphabet must be used for letters, except where 
another alphabet is customarily used, such as the Greek alphabet to 
indicate angles, wavelengths, and mathematical formulas.
    (3) Numbers, letters, and reference characters must measure at least 
.32 cm. (\1/8\ inch) in height. They should not be placed in the drawing 
so as to interfere with its comprehension. Therefore, they should not 
cross or mingle with the lines. They should not be placed upon hatched 
or shaded surfaces. When necessary, such as indicating a surface or 
cross section, a reference character may be underlined and a blank space 
may be left in the hatching or shading where the character occurs so 
that it appears distinct.
    (4) The same part of an invention appearing in more than one view of 
the drawing must always be designated by the same reference character, 
and the same reference character must never be used to designate 
different parts.
    (5) Reference characters not mentioned in the description shall not 
appear in the drawings. Reference characters mentioned in the 
description must appear in the drawings.
    (q) Lead lines. Lead lines are those lines between the reference 
characters and the details referred to. Such lines may be straight or 
curved and should be as short as possible. They must originate in the 
immediate proximity of the reference character and extend to the feature 
indicated. Lead lines must not cross each other. Lead lines are required 
for each reference character except for those which indicate the surface 
or cross section on which they are placed. Such a reference character 
must be underlined to make it clear that a lead line has not been left 
out by mistake. Lead lines must be executed in the same way as lines in 
the drawing. See paragraph (l) of this section.
    (r) Arrows. Arrows may be used at the ends of the lines, provided 
that their meaning is clear, as follows:
    (1) On a lead line, a freestanding arrow to indicate the entire 
section towards which it points;
    (2) On a lead line, an arrow touching a line to indicate the surface 
shown by the line looking along the direction of the arrow; or
    (3) To show the direction of movement.
    (s) Copyright or Mask Work Notice. A copyright or mask work notice 
may appear in the drawing, but must be placed within the sight of the 
drawing immediately below the figure representing the copyright or mask 
work material and be limited to letters having a print size of .32 cm. 
to .64 cm. (1/8 to 1/4 inches) high. The content of the notice must be 
limited to only those elements provided for by law. For example, 
``<SUP><greek-l></SUP>1983 John Doe'' (17 U.S.C. 401) and ``*M* John 
Doe'' (17 U.S.C. 909) would be properly limited and, under current 
statutes, legally sufficient notices of copyright and mask work, 
respectively. Inclusion of a copyright or mask work notice will be 
permitted only if the authorization language set forth in Sec. 1.71(e) 
is included at the beginning (preferably as the first paragraph) of the 
specification.
    (t) Numbering of sheets of drawings. The sheets of drawings should 
be numbered in consecutive Arabic numerals, starting with 1, within the 
sight as defined in paragraph (g) of this section. These numbers, if 
present, must be placed in the middle of the top of the

[[Page 66]]

sheet, but not in the margin. The numbers can be placed on the right-
hand side if the drawing extends too close to the middle of the top edge 
of the usable surface. The drawing sheet numbering must be clear and 
larger than the numbers used as reference characters to avoid confusion. 
The number of each sheet should be shown by two Arabic numerals placed 
on either side of an oblique line, with the first being the sheet 
number, and the second being the total number of sheets of drawings, 
with no other marking.
    (u) Numbering of views. (1) The different views must be numbered in 
consecutive Arabic numerals, starting with 1, independent of the 
numbering of the sheets and, if possible, in the order in which they 
appear on the drawing sheet(s). Partial views intended to form one 
complete view, on one or several sheets, must be identified by the same 
number followed by a capital letter. View numbers must be preceded by 
the abbreviation ``FIG.'' Where only a single view is used in an 
application to illustrate the claimed invention, it must not be numbered 
and the abbreviation ``FIG.'' must not appear.
    (2) Numbers and letters identifying the views must be simple and 
clear and must not be used in association with brackets, circles, or 
inverted commas. The view numbers must be larger than the numbers used 
for reference characters.
    (v) Security markings. Authorized security markings may be placed on 
the drawings provided they are outside the sight, preferably centered in 
the top margin.
    (w) Corrections. Any corrections on drawings submitted to the Office 
must be durable and permanent.
    (x) Holes. No holes should be made by applicant in the drawing 
sheets.
    (y) Types of drawings. See Sec. 1.152 for design drawings, 
Sec. 1.165 for plant drawings, and Sec. 1.174 for reissue drawings.

[58 FR 38723, July 20, 1993; 58 FR 45841, 45842, Aug. 31, 1993, as 
amended at 61 FR 42804, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997; 65 FR 
54669, Sept. 8, 2000; 65 FR 57055, Sept. 20, 2000]

Sec. 1.85  Corrections to drawings.

    (a) A utility or plant application will not be placed on the files 
for examination until objections to the drawings have been corrected. 
Except as provided in Sec. 1.215(c), any patent application publication 
will not include drawings filed after the application has been placed on 
the files for examination. Unless applicant is otherwise notified in an 
Office action, objections to the drawings in a utility or plant 
application will not be held in abeyance, and a request to hold 
objections to the drawings in abeyance will not be considered a bona 
fide attempt to advance the application to final action (Sec. 1.135(c)). 
If a drawing in a design application meets the requirements of 
Sec. 1.84(e), (f), and (g) and is suitable for reproduction, but is not 
otherwise in compliance with Sec. 1.84, the drawing may be admitted for 
examination.
    (b) The Office will not release drawings for purposes of correction. 
If corrections are necessary, new corrected drawings must be submitted 
within the time set by the Office.
    (c) If a corrected drawing is required or if a drawing does not 
comply with Sec. 1.84 at the time an application is allowed, the Office 
may notify the applicant and set a three month period of time from the 
mail date of the notice of allowability within which the applicant must 
file a corrected or formal drawing in compliance with Sec. 1.84 to avoid 
abandonment. This time period is not extendable under Sec. 1.136(a) or 
Sec. 1.136(b).

[65 FR 54670, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000]

Sec. 1.88  [Reserved]

                       Models, Exhibits, Specimens

    Authority: Secs. 1.91 to 1.95 also issued under 35 U.S.C. 114.

Sec. 1.91  Models or exhibits not generally admitted as part of 
          application or patent.

    (a) A model or exhibit will not be admitted as part of the record of 
an application unless it:
    (1) Substantially conforms to the requirements of Sec. 1.52 or 
Sec. 1.84;
    (2) Is specifically required by the Office; or
    (3) Is filed with a petition under this section including:
    (i) The fee set forth in Sec. 1.17(h); and

[[Page 67]]

    (ii) An explanation of why entry of the model or exhibit in the file 
record is necessary to demonstrate patentability.
    (b) Notwithstanding the provisions of paragraph (a) of this section, 
a model, working model, or other physical exhibit may be required by the 
Office if deemed necessary for any purpose in examination of the 
application.

[62 FR 53190, Oct. 10, 1997, as amended at 65 FR 54670, Sept. 8, 2000]

Sec. 1.92  [Reserved]

Sec. 1.93  Specimens.

    When the invention relates to a composition of matter, the applicant 
may be required to furnish specimens of the composition, or of its 
ingredients or intermediates, for the purpose of inspection or 
experiment.

Sec. 1.94  Return of models, exhibits or specimens.

    Models, exhibits, or specimens in applications which have become 
abandoned, and also in other applications on conclusion of the 
prosecution, may be returned to the applicant upon demand and at his 
expense, unless it be deemed necessary that they be preserved in the 
Office. Such physical exhibits in contested cases may be returned to the 
parties at their expense. If not claimed within a reasonable time, they 
may be disposed of at the discretion of the Commissioner.

Sec. 1.95  Copies of exhibits.

    Copies of models or other physical exhibits will not ordinarily be 
furnished by the Office, and any model or exhibit in an application or 
patent shall not be taken from the Office except in the custody of an 
employee of the Office specially authorized by the Commissioner.

Sec. 1.96  Submission of computer program listings.

    (a) General. Descriptions of the operation and general content of 
computer program listings should appear in the description portion of 
the specification. A computer program listing for the purpose of this 
section is defined as a printout that lists in appropriate sequence the 
instructions, routines, and other contents of a program for a computer. 
The program listing may be either in machine or machine-independent 
(object or source) language which will cause a computer to perform a 
desired procedure or task such as solve a problem, regulate the flow of 
work in a computer, or control or monitor events. Computer program 
listings may be submitted in patent applications as set forth in 
paragraphs (b) and (c) of this section.
    (b) Material which will be printed in the patent: If the computer 
program listing is contained in 300 lines or fewer, with each line of 72 
characters or fewer, it may be submitted either as drawings or as part 
of the specification.
    (1) Drawings. If the listing is submitted as drawings, it must be 
submitted in the manner and complying with the requirements for drawings 
as provided in Sec. 1.84. At least one figure numeral is required on 
each sheet of drawing.
    (2) Specification. (i) If the listing is submitted as part of the 
specification, it must be submitted in accordance with the provisions of 
Sec. 1.52.
    (ii) Any listing having more than 60 lines of code that is submitted 
as part of the specification must be positioned at the end of the 
description but before the claims. Any amendment must be made by way of 
submission of a substitute sheet.
    (c) As an appendix which will not be printed: Any computer program 
listing may, and any computer program listing having over 300 lines (up 
to 72 characters per line) must, be submitted on a compact disc in 
compliance with Sec. 1.52(e). A compact disc containing such a computer 
program listing is to be referred to as a ``computer program listing 
appendix.'' The ``computer program listing appendix'' will not be part 
of the printed patent. The specification must include a reference to the 
``computer program listing appendix'' at the location indicated in 
Sec. 1.77(b)(4).
    (1) Multiple computer program listings for a single application may 
be placed on a single compact disc. Multiple compact discs may be 
submitted for a single application if necessary. A separate compact disc 
is required for each application containing a computer program listing 
that must be

[[Page 68]]

submitted on a ``computer program listing appendix.''
    (2) The ``computer program listing appendix'' must be submitted on a 
compact disc that complies with Sec. 1.52(e) and the following 
specifications (no other format shall be allowed):
    (i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple 
Macintosh;
    (ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or 
Macintosh;
    (iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
    (iv) Control Codes: the data must not be dependent on control 
characters or codes which are not defined in the ASCII character set; 
and
    (v) Compression: uncompressed data.

[61 FR 42804, Aug. 19, 1996, as amended at 65 FR 54670, Sept. 8, 2000]

                    Information Disclosure Statement

Sec. 1.97  Filing of information disclosure statement.

    (a) In order for an applicant for a patent or for a reissue of a 
patent to have an information disclosure statement in compliance with 
Sec. 1.98 considered by the Office during the pendency of the 
application, the information disclosure statement must satisfy one of 
paragraphs (b), (c), or (d) of this section.
    (b) An information disclosure statement shall be considered by the 
Office if filed by the applicant within any one of the following time 
periods:
    (1) Within three months of the filing date of a national application 
other than a continued prosecution application under Sec. 1.53(d);
    (2) Within three months of the date of entry of the national stage 
as set forth in Sec. 1.491 in an international application;
    (3) Before the mailing of a first Office action on the merits; or
    (4) Before the mailing of a first Office action after the filing of 
a request for continued examination under Sec. 1.114.
    (c) An information disclosure statement shall be considered by the 
Office if filed after the period specified in paragraph (b) of this 
section, provided that the information disclosure statement is filed 
before the mailing date of any of a final action under Sec. 1.113, a 
notice of allowance under Sec. 1.311, or an action that otherwise closes 
prosecution in the application, and it is accompanied by one of:
    (1) The statement specified in paragraph (e) of this section; or
    (2) The fee set forth in Sec. 1.17(p).
    (d) An information disclosure statement shall be considered by the 
Office if filed by the applicant after the period specified in paragraph 
(c) of this section, provided that the information disclosure statement 
is filed on or before payment of the issue fee and is accompanied by:
    (1) The statement specified in paragraph (e) of this section; and
    (2) The fee set forth in Sec. 1.17(p).
    (e) A statement under this section must state either:
    (1) That each item of information contained in the information 
disclosure statement was first cited in any communication from a foreign 
patent office in a counterpart foreign application not more than three 
months prior to the filing of the information disclosure statement; or
    (2) That no item of information contained in the information 
disclosure statement was cited in a communication from a foreign patent 
office in a counterpart foreign application, and, to the knowledge of 
the person signing the certification after making reasonable inquiry, no 
item of information contained in the information disclosure statement 
was known to any individual designated in Sec. 1.56(c) more than three 
months prior to the filing of the information disclosure statement.
    (f) No extensions of time for filing an information disclosure 
statement are permitted under Sec. 1.136. If a bona fide attempt is made 
to comply with Sec. 1.98, but part of the required content is 
inadvertently omitted, additional time may be given to enable full 
compliance.
    (g) An information disclosure statement filed in accordance with 
this section shall not be construed as a representation that a search 
has been made.
    (h) The filing of an information disclosure statement shall not be 
construed to be an admission that the information cited in the statement 
is, or

[[Page 69]]

is considered to be, material to patentability as defined in 
Sec. 1.56(b).
    (i) If an information disclosure statement does not comply with 
either this section or Sec. 1.98, it will be placed in the file but will 
not be considered by the Office.

[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60 
FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct. 
10, 1997; 65 FR 14872, Mar. 20, 2000; 65 FR 54670, Sept. 8, 2000]

Sec. 1.98  Content of information disclosure statement.

    (a) Any information disclosure statement filed under Sec. 1.97 shall 
include:
    (1) A list of all patents, publications, applications, or other 
information submitted for consideration by the Office;
    (2) A legible copy of:
    (i) Each U.S. patent application publication and U.S. and foreign 
patent;
    (ii) Each publication or that portion which caused it to be listed;
    (iii) For each cited pending U.S. application, the application 
specification including the claims, and any drawing of the application, 
or that portion of the application which caused it to be listed 
including any claims directed to that portion; and
    (iv) All other information or that portion which caused it to be 
listed; and
    (3)(i) A concise explanation of the relevance, as it is presently 
understood by the individual designated in Sec. 1.56(c) most 
knowledgeable about the content of the information, of each patent, 
publication, or other information listed that is not in the English 
language. The concise explanation may be either separate from 
applicant's specification or incorporated therein.
    (ii) A copy of the translation if a written English-language 
translation of a non-English-language document, or portion thereof, is 
within the possession, custody, or control of, or is readily available 
to any individual designated in Sec. 1.56(c).
    (b)(1) Each U.S. patent listed in an information disclosure 
statement must be identified by inventor, patent number, and issue date.
    (2) Each U.S. patent application publication listed in an 
information disclosure statement shall be identified by applicant, 
patent application publication number, and publication date.
    (3) Each U.S. application listed in an information disclosure 
statement must be identified by the inventor, application number, and 
filing date.
    (4) Each foreign patent or published foreign patent application 
listed in an information disclosure statement must be identified by the 
country or patent office which issued the patent or published the 
application, an appropriate document number, and the publication date 
indicated on the patent or published application.
    (5) Each publication listed in an information disclosure statement 
must be identified by publisher, author (if any), title, relevant pages 
of the publication, date, and place of publication.
    (c) When the disclosures of two or more patents or publications 
listed in an information disclosure statement are substantively 
cumulative, a copy of one of the patents or publications may be 
submitted without copies of the other patents or publications, provided 
that it is stated that these other patents or publications are 
cumulative.
    (d) A copy of any patent, publication, pending U.S. application or 
other information, as specified in paragraph (a) of this section, listed 
in an information disclosure statement is required to be provided, even 
if the patent, publication, pending U.S. application or other 
information was previously submitted to, or cited by, the Office in an 
earlier application, unless:
    (1) The earlier application is properly identified in the 
information disclosure statement and is relied on for an earlier 
effective filing date under 35 U.S.C. 120; and
    (2) The information disclosure statement submitted in the earlier 
application complies with paragraphs (a) through (c) of this section.

[65 FR 54671, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000]

Sec. 1.99  Third-party submission in published application.

    (a) A submission by a member of the public of patents or 
publications relevant to a pending published application may be entered 
in the application file if the submission complies with the requirements 
of this section and the

[[Page 70]]

application is still pending when the submission and application file 
are brought before the examiner.
    (b) A submission under this section must identify the application to 
which it is directed by application number and include:
    (1) The fee set forth in Sec. 1.17(p);
    (2) A list of the patents or publications submitted for 
consideration by the Office, including the date of publication of each 
patent or publication;
    (3) A copy of each listed patent or publication in written form or 
at least the pertinent portions; and
    (4) An English language translation of all the necessary and 
pertinent parts of any non-English language patent or publication in 
written form relied upon.
    (c) The submission under this section must be served upon the 
applicant in accordance with Sec. 1.248.
    (d) A submission under this section shall not include any 
explanation of the patents or publications, or any other information. 
The Office will dispose of such explanation or information if included 
in a submission under this section. A submission under this section is 
also limited to ten total patents or publications.
    (e) A submission under this section must be filed within two months 
from the date of publication of the application (Sec. 1.215(a)) or prior 
to the mailing of a notice of allowance (Sec. 1.311), whichever is 
earlier. Any submission under this section not filed within this period 
is permitted only when the patents or publications could not have been 
submitted to the Office earlier, and must also be accompanied by the 
processing fee set forth in Sec. 1.17(i). A submission by a member of 
the public to a pending published application that does not comply with 
the requirements of this section will be returned or discarded.
    (f) A member of the public may include a self-addressed postcard 
with a submission to receive an acknowledgment by the Office that the 
submission has been received. A member of the public filing a submission 
under this section will not receive any communications from the Office 
relating to the submission other than the return of a self-addressed 
postcard. In the absence of a request by the Office, an applicant has no 
duty to, and need not, reply to a submission under this section.

[65 FR 57056, Sept. 20, 2000; 65 FR 66502, Nov. 6, 2000]

                       Examination of Applications

    Authority: Secs. 1.101 to 1.108 also issued under 35 U.S.C. 131, 
132.

Sec. 1.101  [Reserved]

Sec. 1.102  Advancement of examination.

    (a) Applications will not be advanced out of turn for examination or 
for further action except as provided by this part, or upon order of the 
Commissioner to expedite the business of the Office, or upon filing of a 
request under paragraph (b) of this section or upon filing a petition 
under paragraphs (c) or (d) of this section with a showing which, in the 
opinion of the Commissioner, will justify so advancing it.
    (b) Applications wherein the inventions are deemed of peculiar 
importance to some branch of the public service and the head of some 
department of the Government requests immediate action for that reason, 
may be advanced for examination.
    (c) A petition to make an application special may be filed without a 
fee if the basis for the petition is the applicant's age or health or 
that the invention will materially enhance the quality of the 
environment or materially contribute to the development or conservation 
of energy resources.
    (d) A petition to make an application special on grounds other than 
those referred to in paragraph (c) of this section must be accompanied 
by the fee set forth in Sec. 1.17(h).

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

[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982; 
54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, Oct. 
10, 1997; 65 FR 54671, Sept. 8, 2000]

Sec. 1.103  Suspension of action by the Office.

    (a) Suspension for cause. On request of the applicant, the Office 
may grant a suspension of action by the Office under this paragraph for 
good and sufficient cause. The Office will not suspend action if a reply 
by applicant to

[[Page 71]]

an Office action is outstanding. Any petition for suspension of action 
under this paragraph must specify a period of suspension not exceeding 
six months. Any petition for suspension of action under this paragraph 
must also include:
    (1) A showing of good and sufficient cause for suspension of action; 
and
    (2) The fee set forth in Sec. 1.17(h), unless such cause is the 
fault of the Office.
    (b) Limited suspension of action in a continued prosecution 
application (CPA) filed under Sec. 1.53(d). On request of the applicant, 
the Office may grant a suspension of action by the Office under this 
paragraph in a continued prosecution application filed under 
Sec. 1.53(d) for a period not exceeding three months. Any request for 
suspension of action under this paragraph must be filed with the request 
for an application filed under Sec. 1.53(d), specify the period of 
suspension, and include the processing fee set forth in Sec. 1.17(i).
    (c) Limited suspension of action after a request for continued 
examination (RCE) under Sec. 1.114. On request of the applicant, the 
Office may grant a suspension of action by the Office under this 
paragraph after the filing of a request for continued examination in 
compliance with Sec. 1.114 for a period not exceeding three months. Any 
request for suspension of action under this paragraph must be filed with 
the request for continued examination under Sec. 1.114, specify the 
period of suspension, and include the processing fee set forth in 
Sec. 1.17(i).
    (d) Deferral of examination. On request of the applicant, the Office 
may grant a deferral of examination under the conditions specified in 
this paragraph for a period not extending beyond three years from the 
earliest filing date for which a benefit is claimed under title 35, 
United States Code. A request for deferral of examination under this 
paragraph must include the publication fee set forth in Sec. 1.18(d) and 
the processing fee set forth in Sec. 1.17(i). A request for deferral of 
examination under this paragraph will not be granted unless:
    (1) The application is an original utility or plant application 
filed under Sec. 1.53(b) or resulting from entry of an international 
application into the national stage after compliance with Sec. 1.494 or 
Sec. 1.495;
    (2) The applicant has not filed a nonpublication request under 
Sec. 1.213(a), or has filed a request under Sec. 1.213(b) to rescind a 
previously filed nonpublication request;
    (3) The application is in condition for publication as provided in 
Sec. 1.211(c); and
    (4) The Office has not issued either an Office action under 35 
U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
    (e) Notice of suspension on initiative of the Office. The Office 
will notify applicant if the Office suspends action by the Office on an 
application on its own initiative.
    (f) Suspension of action for public safety or defense. The Office 
may suspend action by the Office by order of the Commissioner if the 
following conditions are met:
    (1) The application is owned by the United States;
    (2) Publication of the invention may be detrimental to the public 
safety or defense; and
    (3) The appropriate department or agency requests such suspension.
    (g) Statutory invention registration. The Office will suspend action 
by the Office for the entire pendency of an application if the Office 
has accepted a request to publish a statutory invention registration in 
the application, except for purposes relating to patent interference 
proceedings under Subpart E of this part.

[65 FR 50104, Aug. 16, 2000, as amended at 65 FR 57056, Sept. 20, 2000]

Sec. 1.104  Nature of examination.

    (a) Examiner's action. (1) On taking up an application for 
examination or a patent in a reexamination proceeding, the examiner 
shall make a thorough study thereof and shall make a thorough 
investigation of the available prior art relating to the subject matter 
of the claimed invention. The examination shall be complete with respect 
both to compliance of the application or patent under reexamination with 
the applicable statutes and rules and to the patentability of the 
invention as claimed, as well as with respect to matters of form, unless 
otherwise indicated.

[[Page 72]]

    (2) The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified of the 
examiner's action. The reasons for any adverse action or any objection 
or requirement will be stated in an Office action and such information 
or references will be given as may be useful in aiding the applicant, or 
in the case of a reexamination proceeding the patent owner, to judge the 
propriety of continuing the prosecution.
    (3) An international-type search will be made in all national 
applications filed on and after June 1, 1978.
    (4) Any national application may also have an international-type 
search report prepared thereon at the time of the national examination 
on the merits, upon specific written request therefor and payment of the 
international-type search report fee set forth in Sec. 1.21(e). The 
Patent and Trademark Office does not require that a formal report of an 
international-type search be prepared in order to obtain a search fee 
refund in a later filed international application.
    (b) Completeness of examiner's action. The examiner's action will be 
complete as to all matters, except that in appropriate circumstances, 
such as misjoinder of invention, fundamental defects in the application, 
and the like, the action of the examiner may be limited to such matters 
before further action is made. However, matters of form need not be 
raised by the examiner until a claim is found allowable.
    (c) Rejection of claims. (1) If the invention is not considered 
patentable, or not considered patentable as claimed, the claims, or 
those considered unpatentable will be rejected.
    (2) In rejecting claims for want of novelty or for obviousness, the 
examiner must cite the best references at his or her command. When a 
reference is complex or shows or describes inventions other than that 
claimed by the applicant, the particular part relied on must be 
designated as nearly as practicable. The pertinence of each reference, 
if not apparent, must be clearly explained and each rejected claim 
specified.
    (3) In rejecting claims the examiner may rely upon admissions by the 
applicant, or the patent owner in a reexamination proceeding, as to any 
matter affecting patentability and, insofar as rejections in 
applications are concerned, may also rely upon facts within his or her 
knowledge pursuant to paragraph (d)(2) of this section.
    (4) Subject matter which is developed by another person which 
qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) may be 
used as prior art under 35 U.S.C. 103 against a claimed invention unless 
the entire rights to the subject matter and the claimed invention were 
commonly owned by the same person or organization or subject to an 
obligation of assignment to the same person or organization at the time 
the claimed invention was made.
    (5) The claims in any original application naming an inventor will 
be rejected as being precluded by a waiver in a published statutory 
invention registration naming that inventor if the same subject matter 
is claimed in the application and the statutory invention registration. 
The claims in any reissue application naming an inventor will be 
rejected as being precluded by a waiver in a published statutory 
invention registration naming that inventor if the reissue application 
seeks to claim subject matter:
    (i) Which was not covered by claims issued in the patent prior to 
the date of publication of the statutory invention registration; and
    (ii) Which was the same subject matter waived in the statutory 
invention registration.
    (d) Citation of references. (1) If domestic patents are cited by the 
examiner, their numbers and dates, and the names of the patentees will 
be stated. If domestic patent application publications are cited by the 
examiner, their publication number, publication date, and the names of 
the applicants will be stated. If foreign published applications or 
patents are cited, their nationality or country, numbers and dates, and 
the names of the patentees will be stated, and such other data will be 
furnished as may be necessary to enable the applicant, or in the case of 
a reexamination proceeding, the patent owner, to identify the published 
applications or patents cited. In citing foreign published applications 
or patents, in case only a part of the document is

[[Page 73]]

involved, the particular pages and sheets containing the parts relied 
upon will be identified. If printed publications are cited, the author 
(if any), title, date, pages or plates, and place of publication, or 
place where a copy can be found, will be given.
    (2) When a rejection in an application is based on facts within the 
personal knowledge of an employee of the Office, the data shall be as 
specific as possible, and the reference must be supported, when called 
for by the applicant, by the affidavit of such employee, and such 
affidavit shall be subject to contradiction or explanation by the 
affidavits of the applicant and other persons.
    (e) Reasons for allowance. If the examiner believes that the record 
of the prosecution as a whole does not make clear his or her reasons for 
allowing a claim or claims, the examiner may set forth such reasoning. 
The reasons shall be incorporated into an Office action rejecting other 
claims of the application or patent under reexamination or be the 
subject of a separate communication to the applicant or patent owner. 
The applicant or patent owner may file a statement commenting on the 
reasons for allowance within such time as may be specified by the 
examiner. Failure by the examiner to respond to any statement commenting 
on reasons for allowance does not give rise to any implication.

[62 FR 53191, Oct. 10, 1997, as amended at 65 FR 14872, Mar. 20, 2000; 
65 FR 54671, Sept. 8, 2000; 65 FR 57056, Sept. 20, 2000]

Sec. 1.105  Requirements for information.

    (a)(1) In the course of examining or treating a matter in a pending 
or abandoned application filed under 35 U.S.C. 111 or 371 (including a 
reissue application), in a patent, or in a reexamination proceeding, the 
examiner or other Office employee may require the submission, from 
individuals identified under Sec. 1.56(c), or any assignee, of such 
information as may be reasonably necessary to properly examine or treat 
the matter, for example:
    (i) Commercial databases: The existence of any particularly relevant 
commercial database known to any of the inventors that could be searched 
for a particular aspect of the invention.
    (ii) Search: Whether a search of the prior art was made, and if so, 
what was searched.
    (iii) Related information: A copy of any non-patent literature, 
published application, or patent (U.S. or foreign), by any of the 
inventors, that relates to the claimed invention.
    (iv) Information used to draft application: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used to draft the application.
    (v) Information used in invention process: A copy of any non-patent 
literature, published application, or patent (U.S. or foreign) that was 
used in the invention process, such as by designing around or providing 
a solution to accomplish an invention result.
    (vi) Improvements: Where the claimed invention is an improvement, 
identification of what is being improved.
    (vii) In use: Identification of any use of the claimed invention 
known to any of the inventors at the time the application was filed 
notwithstanding the date of the use.
    (2) Where an assignee has asserted its right to prosecute pursuant 
to Sec. 3.71(a) of this chapter, matters such as paragraphs (a)(1)(i), 
(iii), and (vii) of this section may also be applied to such assignee.
    (3) Any reply that states that the information required to be 
submitted is unknown and/or is not readily available to the party or 
parties from which it was requested will be accepted as a complete 
reply.
    (b) The requirement for information of paragraph (a)(1) of this 
section may be included in an Office action, or sent separately.
    (c) A reply, or a failure to reply, to a requirement for information 
under this section will be governed by Secs. 1.135 and 1.136.

[65 FR 54671, Sept. 8, 2000]

Secs. 1.106-1.109  [Reserved]

Sec. 1.110  Inventorship and date of invention of the subject matter of 
          individual claims.

    When more than one inventor is named in an application or patent, 
the Patent and Trademark Office, when

[[Page 74]]

necessary for purposes of an Office proceeding, may require an 
applicant, patentee, or owner to identify the inventive entity of the 
subject matter of each claim in the application or patent. Where 
appropriate, the invention dates of the subject matter of each claim and 
the ownership of the subject matter on the date of invention may be 
required of the applicant, patentee or owner. See also Secs. 1.78(c) and 
1.130.

[61 FR 42805, Aug. 19, 1996]

              Action by Applicant and Further Consideration

    Authority: Secs. 1.111 to 1.113 also issued under 35 U.S.C. 132.

Sec. 1.111  Reply by applicant or patent owner to a non-final Office 
          action.

    (a)(1) If the Office action after the first examination (Sec. 1.104) 
is adverse in any respect, the applicant or patent owner, if he or she 
persists in his or her application for a patent or reexamination 
proceeding, must reply and request reconsideration or further 
examination, with or without amendment. See Secs. 1.135 and 1.136 for 
time for reply to avoid abandonment.
    (2) A second (or subsequent) supplemental reply will be entered 
unless disapproved by the Commissioner. A second (or subsequent) 
supplemental reply may be disapproved if the second (or subsequent) 
supplemental reply unduly interferes with an Office action being 
prepared in response to the previous reply. Factors that will be 
considered in disapproving a second (or subsequent) supplemental reply 
include:
    (i) The state of preparation of an Office action responsive to the 
previous reply as of the date of receipt (Sec. 1.6) of the second (or 
subsequent) supplemental reply by the Office; and
    (ii) The nature of any changes to the specification or claims that 
would result from entry of the second (or subsequent) supplemental 
reply.
    (b) In order to be entitled to reconsideration or further 
examination, the applicant or patent owner must reply to the Office 
action. The reply by the applicant or patent owner must be reduced to a 
writing which distinctly and specifically points out the supposed errors 
in the examiner's action and must reply to every ground of objection and 
rejection in the prior Office action. The reply must present arguments 
pointing out the specific distinctions believed to render the claims, 
including any newly presented claims, patentable over any applied 
references. If the reply is with respect to an application, a request 
may be made that objections or requirements as to form not necessary to 
further consideration of the claims be held in abeyance until allowable 
subject matter is indicated. The applicant's or patent owner's reply 
must appear throughout to be a bona fide attempt to advance the 
application or the reexamination proceeding to final action. A general 
allegation that the claims define a patentable invention without 
specifically pointing out how the language of the claims patentably 
distinguishes them from the references does not comply with the 
requirements of this section.
    (c) In amending in reply to a rejection of claims in an application 
or patent under reexamination, the applicant or patent owner must 
clearly point out the patentable novelty which he or she thinks the 
claims present in view of the state of the art disclosed by the 
references cited or the objections made. The applicant or patent owner 
must also show how the amendments avoid such references or objections.

[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997; 65 
FR 54672, Sept. 8, 2000]

Sec. 1.112  Reconsideration before final action.

    After reply by applicant or patent owner (Sec. 1.111 or Sec. 1.945) 
to a non-final action and any comments by an inter partes reexamination 
requester (Sec. 1.947), the application or the patent under 
reexamination will be reconsidered and again examined. The applicant, or 
in the case of a reexamination proceeding the patent owner and any third 
party requester, will be notified if claims are rejected, objections or 
requirements made, or decisions favorable to patentability are made, in 
the same manner as after the first examination (Sec. 1.104). Applicant 
or patent owner may reply to such Office action in the same manner 
provided in Sec. 1.111 or Sec. 1.945, with or without amendment, unless 
such Office

[[Page 75]]

action indicates that it is made final (Sec. 1.113) or an appeal 
(Sec. 1.191) has been taken (Sec. 1.116), or in an inter partes 
reexamination, that it is an action closing prosecution (Sec. 1.949) or 
a right of appeal notice (Sec. 1.953).

[65 FR 76773, Dec. 7, 2000]

Sec. 1.113  Final rejection or action.

    (a) On the second or any subsequent examination or consideration by 
the examiner the rejection or other action may be made final, whereupon 
applicant's, or for ex parte reexaminations filed under Sec. 1.510, 
patent owner's reply is limited to appeal in the case of rejection of 
any claim (Sec. 1.191), or to amendment as specified in Sec. 1.114 or 
Sec. 1.116. Petition may be taken to the Commissioner in the case of 
objections or requirements not involved in the rejection of any claim 
(Sec. 1.181). Reply to a final rejection or action must comply with 
Sec. 1.114 or paragraph (c) of this section. For final actions in an 
inter partes reexamination filed under Sec. 1.913, see Sec. 1.953.
    (b) In making such final rejection, the examiner shall repeat or 
state all grounds of rejection then considered applicable to the claims 
in the application, clearly stating the reasons in support thereof.
    (c) Reply to a final rejection or action must include cancellation 
of, or appeal from the rejection of, each rejected claim. If any claim 
stands allowed, the reply to a final rejection or action must comply 
with any requirements or objections as to form.

[65 FR 14872, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000]

Sec. 1.114  Request for continued examination.

    (a) If prosecution in an application is closed, an applicant may 
request continued examination of the application by filing a submission 
and the fee set forth in Sec. 1.17(e) prior to the earliest of:
    (1) Payment of the issue fee, unless a petition under Sec. 1.313 is 
granted;
    (2) Abandonment of the application; or
    (3) The filing of a notice of appeal to the U.S. Court of Appeals 
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a 
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil 
action is terminated.
    (b) Prosecution in an application is closed as used in this section 
means that the application is under appeal, or that the last Office 
action is a final action (Sec. 1.113), a notice of allowance 
(Sec. 1.311), or an action that otherwise closes prosecution in the 
application.
    (c) A submission as used in this section includes, but is not 
limited to, an information disclosure statement, an amendment to the 
written description, claims, or drawings, new arguments, or new evidence 
in support of patentability. If reply to an Office action under 35 
U.S.C. 132 is outstanding, the submission must meet the reply 
requirements of Sec. 1.111.
    (d) If an applicant timely files a submission and fee set forth in 
Sec. 1.17(e), the Office will withdraw the finality of any Office action 
and the submission will be entered and considered. If an applicant files 
a request for continued examination under this section after appeal, but 
prior to a decision on the appeal, it will be treated as a request to 
withdraw the appeal and to reopen prosecution of the application before 
the examiner. An appeal brief under Sec. 1.192 or a reply brief under 
Sec. 1.193(b), or related papers, will not be considered a submission 
under this section.
    (e) The provisions of this section do not apply to:
    (1) A provisional application;
    (2) An application for a utility or plant patent filed under 35 
U.S.C. 111(a) before June 8, 1995;
    (3) An international application filed under 35 U.S.C. 363 before 
June 8, 1995;
    (4) An application for a design patent; or
    (5) A patent under reexamination.

[65 FR 50104, Aug. 16, 2000]

                               Amendments

    Authority: Secs. 1.115 to 1.127 also issued under 35 U.S.C. 132.

Sec. 1.115  Preliminary amendments.

    (a) A preliminary amendment is an amendment that is received in the 
Office (Sec. 1.6) on or before the mail date of the first Office action 
under Sec. 1.104.
    (b)(1) A preliminary amendment will be entered unless disapproved by 
the

[[Page 76]]

Commissioner. A preliminary amendment may be disapproved if the 
preliminary amendment unduly interferes with the preparation of a first 
Office action in an application. Factors that will be considered in 
disapproving a preliminary amendment include:
    (i) The state of preparation of a first Office action as of the date 
of receipt (Sec. 1.6) of the preliminary amendment by the Office; and
    (ii) The nature of any changes to the specification or claims that 
would result from entry of the preliminary amendment.
    (2) A preliminary amendment will not be disapproved if it is filed 
no later than:
    (i) Three months from the filing date of an application under 
Sec. 1.53(b);
    (ii) The filing date of a continued prosecution application under 
Sec. 1.53(d); or
    (iii) Three months from the date the national stage is entered as 
set forth in Sec. 1.491 in an international application.
    (c) The time periods specified in paragraph (b)(2) of this section 
are not extendable.

[65 FR 54672, Sept. 8, 2000]

Sec. 1.116  Amendments after final action or appeal

    (a) An amendment after final action or appeal must comply with 
Sec. 1.114 or this section.
    (b) After a final rejection or other final action (Sec. 1.113) in an 
application or in an ex parte reexamination filed under Sec. 1.510, or 
an action closing prosecution (Sec. 1.949) in an inter partes 
reexamination filed under Sec. 1.913, amendments may be made canceling 
claims or complying with any requirement of form expressly set forth in 
a previous Office action. Amendments presenting rejected claims in 
better form for consideration on appeal may be admitted. The admission 
of, or refusal to admit, any amendment after a final rejection, a final 
action, an action closing prosecution, or any related proceedings will 
not operate to relieve the application or patent under reexamination 
from its condition as subject to appeal or to save the application from 
abandonment under Sec. 1.135, or the reexamination from termination. No 
amendment can be made in an inter partes reexamination proceeding after 
the right of appeal notice under Sec. 1.953 except as provided for in 
paragraph (d) of this section.
    (c) If amendments touching the merits of the application or patent 
under reexamination are presented after final rejection, or after appeal 
has been taken, or when such amendment might not otherwise be proper, 
they may be admitted upon a showing of good and sufficient reasons why 
they are necessary and were not earlier presented.
    (d) No amendment can be made as a matter of right in appealed cases. 
After decision on appeal, amendments can only be made as provided in 
Secs. 1.198 and 1.981, or to carry into effect a recommendation under 
Sec. 1.196 or Sec. 1.977.

[65 FR 14873, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000]

Secs. 1.117-1.119  [Reserved]

Sec. 1.121  Manner of making amendments in applications.

    (a) Amendments in applications, other than reissue applications. 
Amendments in applications, other than reissue applications, are made by 
filing a paper, in compliance with Sec. 1.52, directing that specified 
amendments be made.
    (b) Specification other than the claims and listings provided for 
elsewhere (Secs. 1.96 and 1.825)--(1) Amendment by instruction to 
delete, replace, or add a paragraph. Amendments to the specification, 
other than the claims and listings provided for elsewhere (Secs. 1.96 
and 1.825), may be made by submitting:
    (i) An instruction, which unambiguously identifies the location, to 
delete one or more paragraphs of the specification, replace a deleted 
paragraph with one or more replacement paragraphs, or add one or more 
paragraphs;
    (ii) Any replacement or added paragraph(s) in clean form, that is, 
without markings to indicate the changes that have been made; and
    (iii) Another version of any replacement paragraph(s), on one or 
more pages separate from the amendment, marked up to show all the 
changes relative to the previous version of the paragraph(s). The 
changes may be shown by brackets (for deleted matter) or underlining 
(for added matter), or by any equivalent marking system. A

[[Page 77]]

marked up version does not have to be supplied for an added paragraph or 
a deleted paragraph as it is sufficient to state that a particular 
paragraph has been added, or deleted.
    (2) Amendment by replacement section. If the sections of the 
specification contain section headings as provided in Secs. 1.77(b), 
1.154(b), or Sec. 1.163(c), amendments to the specification, other than 
the claims, may be made by submitting:
    (i) A reference to the section heading along with an instruction to 
delete that section of the specification and to replace such deleted 
section with a replacement section;
    (ii) A replacement section in clean form, that is, without markings 
to indicate the changes that have been made; and
    (iii) Another version of the replacement section, on one or more 
pages separate from the amendment, marked up to show all changes 
relative to the previous version of the section. The changes may be 
shown by brackets (for deleted matter) or underlining (for added 
matter), or by any equivalent marking system.
    (3) Amendment by substitute specification. The specification, other 
than the claims, may also be amended by submitting:
    (i) An instruction to replace the specification;
    (ii) A substitute specification in compliance with Sec. 1.125(b); 
and
    (iii) Another version of the substitute specification, separate from 
the substitute specification, marked up to show all changes relative to 
the previous version of the specification. The changes may be shown by 
brackets (for deleted matter), or underlining (for added matter), or by 
any equivalent marking system.
    (4) Reinstatement: Deleted matter may be reinstated only by a 
subsequent amendment presenting the previously deleted matter.
    (c) Claims--(1) Amendment by rewriting, directions to cancel or add: 
Amendments to a claim must be made by rewriting such claim with all 
changes (e.g., additions, deletions, modifications) included. The 
rewriting of a claim (with the same number) will be construed as 
directing the cancellation of the previous version of that claim. A 
claim may also be canceled by an instruction.
    (i) A rewritten or newly added claim must be in clean form, that is, 
without markings to indicate the changes that have been made. A 
parenthetical expression should follow the claim number indicating the 
status of the claim as amended or newly added (e.g., ``amended,'' 
``twice amended,'' or ``new'').
    (ii) If a claim is amended by rewriting such claim with the same 
number, the amendment must be accompanied by another version of the 
rewritten claim, on one or more pages separate from the amendment, 
marked up to show all the changes relative to the previous version of 
that claim. A parenthetical expression should follow the claim number 
indicating the status of the claim, e.g., ``amended,'' ``twice 
amended,'' etc. The parenthetical expression ``amended,'' ``twice 
amended,'' etc. should be the same for both the clean version of the 
claim under paragraph (c)(1)(i) of this section and the marked up 
version under this paragraph. The changes may be shown by brackets (for 
deleted matter) or underlining (for added matter), or by any equivalent 
marking system. A marked up version does not have to be supplied for an 
added claim or a canceled claim as it is sufficient to state that a 
particular claim has been added, or canceled.
    (2) A claim canceled by amendment (deleted in its entirety) may be 
reinstated only by a subsequent amendment presenting the claim as a new 
claim with a new claim number.
    (3) A clean version of the entire set of pending claims may be 
submitted in a single amendment paper. Such a submission shall be 
construed as directing the cancellation of all previous versions of any 
pending claims. A marked up version is required only for claims being 
changed by the current amendment (see paragraph (c)(1)(ii) of this 
section). Any claim not accompanied by a marked up version will 
constitute an assertion that it has not been changed relative to the 
immediate prior version.
    (d) Drawings. Application drawings are amended in the following 
manner:

[[Page 78]]

Any change to the application drawings must be submitted on a separate 
paper showing the proposed changes in red for approval by the examiner. 
Upon approval by the examiner, new drawings in compliance with Sec. 1.84 
including the changes must be filed.
    (e) Disclosure consistency. The disclosure must be amended, when 
required by the Office, to correct inaccuracies of description and 
definition, and to secure substantial correspondence between the claims, 
the remainder of the specification, and the drawings.
    (f) No new matter. No amendment may introduce new matter into the 
disclosure of an application.
    (g) Exception for examiner's amendments: Changes to the 
specification, including the claims, of an application made by the 
Office in an examiner's amendment may be made by specific instructions 
to insert or delete subject matter set forth in the examiner's amendment 
by identifying the precise point in the specification or the claim(s) 
where the insertion or deletion is to be made. Compliance with 
paragraphs (b)(1), (b)(2) or (c)(1) of this section is not required.
    (h) Amendments in reissue applications. Any amendment to the 
description and claims in reissue applications must be made in 
accordance with Sec. 1.173.
    (i) Amendments in reexamination proceedings: Any proposed amendment 
to the description and claims in patents involved in reexamination 
proceedings in both ex parte reexaminations filed under Sec. 1.510 and 
inter partes reexaminations filed under Sec. 1.913 must be made in 
accordance with Sec. 1.530(d)-(j).
    (j) Amendments in provisional applications: Amendments in 
provisional applications are not normally made. If an amendment is made 
to a provisional application, however, it must comply with the 
provisions of this section. Any amendments to a provisional application 
shall be placed in the provisional application file but may not be 
entered.

[65 FR 54672, Sept. 8, 2000, as amended at 65 FR 76773, Dec. 7, 2000]

Secs. 1.122-1.24  [Reserved]

Sec. 1.125  Substitute specification.

    (a) If the number or nature of the amendments or the legibility of 
the application papers renders it difficult to consider the application, 
or to arrange the papers for printing or copying, the Office may require 
the entire specification, including the claims, or any part thereof, be 
rewritten.
    (b) A substitute specification, excluding the claims, may be filed 
at any point up to payment of the issue fee if it is accompanied by:
    (1) A statement that the substitute specification includes no new 
matter; and
    (2) A marked up version of the substitute specification showing all 
the changes (including the matter being added to and the matter being 
deleted from) to the specification of record. Numbering the paragraphs 
of the specification of record is not considered a change that must be 
shown pursuant to this paragraph.
    (c) A substitute specification submitted under this section must be 
submitted in clean form without markings as to amended material. The 
paragraphs of any substitute specification, other than the claims, 
should be individually numbered in Arabic numerals so that any amendment 
to the specification may be made by replacement paragraph in accordance 
with Sec. 1.121(b)(1).
    (d) A substitute specification under this section is not permitted 
in a reissue application or in a reexamination proceeding.

[62 FR 53193, Oct. 10, 1997, as amended at 65 FR 54673, Sept. 8, 2000]

Sec. 1.126  Numbering of claims.

    The original numbering of the claims must be preserved throughout 
the prosecution. When claims are canceled the remaining claims must not 
be renumbered. When claims are added, they must be numbered by the 
applicant consecutively beginning with the number next following the 
highest numbered claim previously presented (whether entered or not). 
When the application is ready for allowance, the

[[Page 79]]

examiner, if necessary, will renumber the claims consecutively in the 
order in which they appear or in such order as may have been requested 
by applicant.

[62 FR 53194, Oct. 10, 1997]

Sec. 1.127  Petition from refusal to admit amendment.

    From the refusal of the primary examiner to admit an amendment, in 
whole or in part, a petition will lie to the Commissioner under 
Sec. 1.181.

                         Transitional Provisions

Sec. 1.129  Transitional procedures for limited examination after final 
          rejection and restriction practice.

    (a) An applicant in an application, other than for reissue or a 
design patent, that has been pending for at least two years as of June 
8, 1995, taking into account any reference made in such application to 
any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is 
entitled to have a first submission entered and considered on the merits 
after final rejection under the following circumstances: The Office will 
consider such a submission, if the first submission and the fee set 
forth in Sec. 1.17(r) are filed prior to the filing of an appeal brief 
and prior to abandonment of the application. The finality of the final 
rejection is automatically withdrawn upon the timely filing of the 
submission and payment of the fee set forth in Sec. 1.17(r). If a 
subsequent final rejection is made in the application, applicant is 
entitled to have a second submission entered and considered on the 
merits after the subsequent final rejection under the following 
circumstances: The Office will consider such a submission, if the second 
submission and a second fee set forth in Sec. 1.17(r) are filed prior to 
the filing of an appeal brief and prior to abandonment of the 
application. The finality of the subsequent final rejection is 
automatically withdrawn upon the timely filing of the submission and 
payment of the second fee set forth in Sec. 1.17(r). Any submission 
filed after a final rejection made in an application subsequent to the 
fee set forth in Sec. 1.17(r) having been twice paid will be treated as 
set forth in Sec. 1.116. A submission as used in this paragraph 
includes, but is not limited to, an information disclosure statement, an 
amendment to the written description, claims or drawings and a new 
substantive argument or new evidence in support of patentability.
    (b)(1) In an application, other than for reissue or a design patent, 
that has been pending for at least three years as of June 8, 1995; 
taking into account any reference made in the application to any earlier 
filed application under 35 U.S.C. 120, 121, and 365(c), no requirement 
for restriction or for the filing of divisional applications shall be 
made or maintained in the application after June 8, 1995, except where:
    (i) The requirement was first made in the application or any earlier 
filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8, 
1995;
    (ii) The examiner has not made a requirement for restriction in the 
present or parent application prior to April 8, 1995, due to actions by 
the applicant; or
    (iii) The required fee for examination of each additional invention 
was not paid.
    (2) If the application contains more than one independent and 
distinct invention and a requirement for restriction or for the filing 
of divisional applications cannot be made or maintained pursuant to this 
paragraph, applicant will be so notified and given a time period to:
    (i) Elect the invention or inventions to be searched and examined, 
if no election has been made prior to the notice, and pay the fee set 
forth in Sec. 1.17(s) for each independent and distinct invention 
claimed in the application in excess of one which applicant elects;
    (ii) Confirm an election made prior to the notice and pay the fee 
set forth in Sec. 1.17(s) for each independent and distinct invention 
claimed in the application in addition to the one invention which 
applicant previously elected; or
    (iii) File a petition under this section traversing the requirement. 
If the required petition is filed in a timely manner, the original time 
period for electing and paying the fee set forth in Sec. 1.17(s) will be 
deferred and any decision on the petition affirming or modifying the 
requirement will set a new

[[Page 80]]

time period to elect the invention or inventions to be searched and 
examined and to pay the fee set forth in Sec. 1.17(s) for each 
independent and distinct invention claimed in the application in excess 
of one which applicant elects.
    (3) The additional inventions for which the required fee has not 
been paid will be withdrawn from consideration under Sec. 1.142(b). An 
applicant who desires examination of an invention so withdrawn from 
consideration can file a divisional application under 35 U.S.C. 121.
    (c) The provisions of this section shall not be applicable to any 
application filed after June 8, 1995.

[60 FR 20226, Apr. 25, 1995]

                    Affidavits Overcoming Rejections

Sec. 1.130  Affidavit or declaration to disqualify commonly owned patent 
          or published application as prior art.

    (a) When any claim of an application or a patent under reexamination 
is rejected under 35 U.S.C. 103 on a U.S. patent or U.S. patent 
application publication which is not prior art under 35 U.S.C. 102(b), 
and the inventions defined by the claims in the application or patent 
under reexamination and by the claims in the patent or published 
application are not identical but are not patentably distinct, and the 
inventions are owned by the same party, the applicant or owner of the 
patent under reexamination may disqualify the patent or patent 
application publication as prior art. The patent or patent application 
publication can be disqualified as prior art by submission of:
    (1) A terminal disclaimer in accordance with Sec. 1.321(c); and
    (2) An oath or declaration stating that the application or patent 
under reexamination and patent or published application are currently 
owned by the same party, and that the inventor named in the application 
or patent under reexamination is the prior inventor under 35 U.S.C. 104.
    (b) When an application or a patent under reexamination claims an 
invention which is not patentably distinct from an invention claimed in 
a commonly owned patent with the same or a different inventive entity, a 
double patenting rejection will be made in the application or a patent 
under reexamination. A judicially created double patenting rejection may 
be obviated by filing a terminal disclaimer in accordance with 
Sec. 1.321(c).

[61 FR 42805, Aug. 19, 1996, as amended at 65 FR 57056, Sept. 20, 2000]

Sec. 1.131  Affidavit or declaration of prior invention.

    (a) When any claim of an application or a patent under reexamination 
is rejected, the inventor of the subject matter of the rejected claim, 
the owner of the patent under reexamination, or the party qualified 
under Secs. 1.42, 1.43, or 1.47, may submit an appropriate oath or 
declaration to establish invention of the subject matter of the rejected 
claim prior to the effective date of the reference or activity on which 
the rejection is based. The effective date of a U.S. patent, U.S. patent 
application publication, or international application publication under 
PCT Article 21(2) is the earlier of its publication date or date that it 
is effective as a reference under 35 U.S.C. 102(e). Prior invention may 
not be established under this section in any country other than the 
United States, a NAFTA country, or a WTO member country. Prior invention 
may not be established under this section before December 8, 1993, in a 
NAFTA country other than the United States, or before January 1, 1996, 
in a WTO member country other than a NAFTA country. Prior invention may 
not be established under this section if either:
    (1) The rejection is based upon a U.S. patent or U.S. patent 
application publication of a pending or patented application to another 
or others which claims the same patentable invention as defined in 
Sec. 1.601(n); or
    (2) The rejection is based upon a statutory bar.
    (b) The showing of facts shall be such, in character and weight, as 
to establish reduction to practice prior to the effective date of the 
reference, or conception of the invention prior to the effective date of 
the reference coupled with due diligence from prior to said date to a 
subsequent reduction to practice or to the filing of the application. 
Original exhibits of drawings or

[[Page 81]]

records, or photocopies thereof, must accompany and form part of the 
affidavit or declaration of their absence satisfactorily explained.

[53 FR 23734, June 23, 1988, as amended at 60 FR 21044, May 1, 1995; 61 
FR 42806, Aug. 19, 1996; 65 FR 54673, Sept. 8, 2000; 65 FR 57057, Sept. 
20, 2000]

Sec. 1.132  Affidavits or declarations traversing rejections or 
          objections.

    When any claim of an application or a patent under reexamination is 
rejected or objected to, any evidence submitted to traverse the 
rejection or objection on a basis not otherwise provided for must be by 
way of an oath or declaration under this section.

[65 FR 57057, Sept. 20, 2000]

                               Interviews

Sec. 1.133  Interviews.

    (a)(1) Interviews with examiners concerning applications and other 
matters pending before the Office must be conducted on Office premises 
and within Office hours, as the respective examiners may designate. 
Interviews will not be permitted at any other time or place without the 
authority of the Commissioner.
    (2) An interview for the discussion of the patentability of a 
pending application will not occur before the first Office action, 
unless the application is a continuing or substitute application.
    (3) The examiner may require that an interview be scheduled in 
advance.
    (b) In every instance where reconsideration is requested in view of 
an interview with an examiner, a complete written statement of the 
reasons presented at the interview as warranting favorable action must 
be filed by the applicant. An interview does not remove the necessity 
for reply to Office actions as specified in Secs. 1.111 and 1.135.

(35 U.S.C. 132)

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53194, Oct. 10, 1997; 
65 FR 54674, Sept. 8, 2000]

         Time for Reply by Applicant; Abandonment of Application

    Authority: Secs. 1.135 to 1.138 also issued under 35 U.S.C. 133.

Sec. 1.134  Time period for reply to an Office action.

    An Office action will notify the applicant of any non-statutory or 
shortened statutory time period set for reply to an Office action. 
Unless the applicant is notified in writing that a reply is required in 
less than six months, a maximum period of six months is allowed.

[62 FR 53194, Oct. 10, 1997]

Sec. 1.135  Abandonment for failure to reply within time period.

    (a) If an applicant of a patent application fails to reply within 
the time period provided under Sec. 1.134 and Sec. 1.136, the 
application will become abandoned unless an Office action indicates 
otherwise.
    (b) Prosecution of an application to save it from abandonment 
pursuant to paragraph (a) of this section must include such complete and 
proper reply as the condition of the application may require. The 
admission of, or refusal to admit, any amendment after final rejection 
or any amendment not responsive to the last action, or any related 
proceedings, will not operate to save the application from abandonment.
    (c) When reply by the applicant is a bona fide attempt to advance 
the application to final action, and is substantially a complete reply 
to the non-final Office action, but consideration of some matter or 
compliance with some requirement has been inadvertently omitted, 
applicant may be given a new time period for reply under Sec. 1.134 to 
supply the omission.

[62 FR 53194, Oct. 10, 1997]

Sec. 1.136  Extensions of time.

    (a)(1) If an applicant is required to reply within a nonstatutory or 
shortened statutory time period, applicant may extend the time period 
for reply up to the earlier of the expiration of any maximum period set 
by statute or five months after the time period set for reply, if a 
petition for an extension of time and the fee set in Sec. 1.17(a) are 
filed, unless:
    (i) Applicant is notified otherwise in an Office action;
    (ii) The reply is a reply brief submitted pursuant to Sec. 1.193(b);

[[Page 82]]

    (iii) The reply is a request for an oral hearing submitted pursuant 
to Sec. 1.194(b);
    (iv) The reply is to a decision by the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.196, Sec. 1.197 or Sec. 1.304; or
    (v) The application is involved in an interference declared pursuant 
to Sec. 1.611.
    (2) The date on which the petition and the fee have been filed is 
the date for purposes of determining the period of extension and the 
corresponding amount of the fee. The expiration of the time period is 
determined by the amount of the fee paid. A reply must be filed prior to 
the expiration of the period of extension to avoid abandonment of the 
application (Sec. 1.135), but in no situation may an applicant reply 
later than the maximum time period set by statute, or be granted an 
extension of time under paragraph (b) of this section when the 
provisions of this paragraph are available. See Sec. 1.136(b) for 
extensions of time relating to proceedings pursuant to Secs. 1.193(b), 
1.194, 1.196 or 1.197; Sec. 1.304 for extensions of time to appeal to 
the U.S. Court of Appeals for the Federal Circuit or to commence a civil 
action; Sec. 1.550(c) for extensions of time in ex parte reexamination 
proceedings; Sec. 1.956 for extensions of time in inter partes 
reexamination proceedings; and Sec. 1.645 for extensions of time in 
interference proceedings.
    (3) A written request may be submitted in an application that is an 
authorization to treat any concurrent or future reply, requiring a 
petition for an extension of time under this paragraph for its timely 
submission, as incorporating a petition for extension of time for the 
appropriate length of time. An authorization to charge all required 
fees, fees under Sec. 1.17, or all required extension of time fees will 
be treated as a constructive petition for an extension of time in any 
concurrent or future reply requiring a petition for an extension of time 
under this paragraph for its timely submission. Submission of the fee 
set forth in Sec. 1.17(a) will also be treated as a constructive 
petition for an extension of time in any concurrent reply requiring a 
petition for an extension of time under this paragraph for its timely 
submission.
    (b) When a reply cannot be filed within the time period set for such 
reply and the provisions of paragraph (a) of this section are not 
available, the period for reply will be extended only for sufficient 
cause and for a reasonable time specified. Any request for an extension 
of time under this paragraph must be filed on or before the day on which 
such reply is due, but the mere filing of such a request will not affect 
any extension under this paragraph. In no situation can any extension 
carry the date on which reply is due beyond the maximum time period set 
by statute. See Sec. 1.304 for extensions of time to appeal to the U.S. 
Court of Appeals for the Federal Circuit or to commence a civil action; 
Sec. 1.645 for extensions of time in interference proceedings; 
Sec. 1.550(c) for extensions of time in ex parte reexamination 
proceedings; and Sec. 1.956 for extensions of time in inter partes 
reexamination proceedings.
    (c) If an applicant is notified in a ``Notice of Allowability'' that 
an application is otherwise in condition for allowance, the following 
time periods are not extendable if set in the ``Notice of Allowability'' 
or in an Office action having a mail date on or after the mail date of 
the ``Notice of Allowability'':
    (1) The period for submitting an oath or declaration in compliance 
with Sec. 1.63;
    (2) The period for submitting formal drawings set under 
Sec. 1.85(c); and
    (3) The period for making a deposit set under Sec. 1.809(c).

[62 FR 53194, Oct. 10, 1997, as amended at 65 FR 54674, Sept. 8, 2000; 
65 FR 76773, Dec. 7, 2000; 66 FR 21092, Apr. 27, 2001]

Sec. 1.137  Revival of abandoned application, terminated reexamination 
          proceeding, or lapsed patent.

    (a) Unavoidable. If the delay in reply by applicant or patent owner 
was unavoidable, a petition may be filed pursuant to this paragraph to 
revive an abandoned application, a reexamination proceeding terminated 
under Secs. 1.550(d) or 1.957(b) or (c), or a lapsed patent. A grantable 
petition pursuant to this paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;

[[Page 83]]

    (2) The petition fee as set forth in Sec. 1.17(l);
    (3) A showing to the satisfaction of the Commissioner that the 
entire delay in filing the required reply from the due date for the 
reply until the filing of a grantable petition pursuant to this 
paragraph was unavoidable; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (d) of this section.
    (b) Unintentional. If the delay in reply by applicant or patent 
owner was unintentional, a petition may be filed pursuant to this 
paragraph to revive an abandoned application, a reexamination proceeding 
terminated under Secs. 1.550(d) or 1.957(b) or (c), or a lapsed patent. 
A grantable petition pursuant to this paragraph must be accompanied by:
    (1) The reply required to the outstanding Office action or notice, 
unless previously filed;
    (2) The petition fee as set forth in Sec. 1.17(m);
    (3) A statement that the entire delay in filing the required reply 
from the due date for the reply until the filing of a grantable petition 
pursuant to this paragraph was unintentional. The Commissioner may 
require additional information where there is a question whether the 
delay was unintentional; and
    (4) Any terminal disclaimer (and fee as set forth in Sec. 1.20(d)) 
required pursuant to paragraph (d) of this section.
    (c) Reply. In a nonprovisional application abandoned for failure to 
prosecute, the required reply may be met by the filing of a continuing 
application. In a nonprovisional utility or plant application filed on 
or after June 8, 1995, and abandoned for failure to prosecute, the 
required reply may also be met by the filing of a request for continued 
examination in compliance with Sec. 1.114. In an application or patent, 
abandoned or lapsed for failure to pay the issue fee or any portion 
thereof, the required reply must include payment of the issue fee or any 
outstanding balance. In an application, abandoned for failure to pay the 
publication fee, the required reply must include payment of the 
publication fee.
    (d) Terminal disclaimer. (1) Any petition to revive pursuant to this 
section in a design application must be accompanied by a terminal 
disclaimer and fee as set forth in Sec. 1.321 dedicating to the public a 
terminal part of the term of any patent granted thereon equivalent to 
the period of abandonment of the application. Any petition to revive 
pursuant to this section in either a utility or plant application filed 
before June 8, 1995, must be accompanied by a terminal disclaimer and 
fee as set forth in Sec. 1.321 dedicating to the public a terminal part 
of the term of any patent granted thereon equivalent to the lesser of:
    (i) The period of abandonment of the application; or
    (ii) The period extending beyond twenty years from the date on which 
the application for the patent was filed in the United States or, if the 
application contains a specific reference to an earlier filed 
application(s) under 35 U.S.C. 120, 121, or 365(c), from the date on 
which the earliest such application was filed.
    (2) Any terminal disclaimer pursuant to paragraph (d)(1) of this 
section must also apply to any patent granted on a continuing utility or 
plant application filed before June 8, 1995, or a continuing design 
application, that contains a specific reference under 35 U.S.C. 120, 
121, or 365(c) to the application for which revival is sought.
    (3) The provisions of paragraph (d)(1) of this section do not apply 
to applications for which revival is sought solely for purposes of 
copendency with a utility or plant application filed on or after June 8, 
1995, to lapsed patents, or to reexamination proceedings.
    (e) Request for reconsideration. Any request for reconsideration or 
review of a decision refusing to revive an abandoned application, a 
terminated reexamination proceeding, or lapsed patent upon petition 
filed pursuant to this section, to be considered timely, must be filed 
within two months of the decision refusing to revive or within such time 
as set in the decision. Unless a decision indicates otherwise, this time 
period may be extended under:
    (1) The provisions of Sec. 1.136 for an abandoned application or 
lapsed patent;

[[Page 84]]

    (2) The provisions of Sec. 1.550(c) for a terminated ex parte 
reexamination proceeding filed under Sec. 1.510; or
    (3) The provisions of Sec. 1.956 for a terminated inter partes 
reexamination proceeding filed under Sec. 1.913.
    (f) Abandonment for failure to notify the Office of a foreign 
filing: A nonprovisional application abandoned pursuant to 35 U.S.C. 
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing 
of an application in a foreign country or under a multinational treaty 
that requires publication of applications eighteen months after filing, 
may be revived only pursuant to paragraph (b) of this section. The reply 
requirement of paragraph (c) of this section is met by the notification 
of such filing in a foreign country or under a multinational treaty, but 
the filing of a petition under this section will not operate to stay any 
period for reply that may be running against the application.
    (g) Provisional applications. A provisional application, abandoned 
for failure to timely respond to an Office requirement, may be revived 
pursuant to this section. Subject to the provisions of 35 U.S.C. 
119(e)(3) and Sec. 1.7(b), a provisional application will not be 
regarded as pending after twelve months from its filing date under any 
circumstances.

[65 FR 57057, Sept. 20, 2000]

Sec. 1.138  Express abandonment.

    (a) An application may be expressly abandoned by filing a written 
declaration of abandonment identifying the application in the United 
States Patent and Trademark Office. Express abandonment of the 
application may not be recognized by the Office before the date of issue 
or publication unless it is actually received by appropriate officials 
in time to act.
    (b) A written declaration of abandonment must be signed by a party 
authorized under Sec. 1.33(b)(1), (b)(3), or (b)(4) to sign a paper in 
the application, except as otherwise provided in this paragraph. A 
registered attorney or agent, not of record, who acts in a 
representative capacity under the provisions of Sec. 1.34(a) when filing 
a continuing application, may expressly abandon the prior application as 
of the filing date granted to the continuing application.
    (c) An applicant seeking to abandon an application to avoid 
publication of the application (see Sec. 1.211(a)(1)) must submit a 
declaration of express abandonment by way of a petition under this 
section including the fee set forth in Sec. 1.17(h) in sufficient time 
to permit the appropriate officials to recognize the abandonment and 
remove the application from the publication process. Applicant should 
expect that the petition will not be granted and the application will be 
published in regular course unless such declaration of express 
abandonment and petition are received by the appropriate officials more 
than four weeks prior to the projected date of publication.

[65 FR 54674, Sept. 8, 2000, as amended at 65 FR 57058, Sept. 20, 2000]

Sec. 1.139  [Reserved]

          Joinder of Inventions in One Application; Restriction

    Authority: Secs. 1.141 to 1.147 also issued under 35 U.S.C. 121.

Sec. 1.141  Different inventions in one national application.

    (a) Two or more independent and distinct inventions may not be 
claimed in one national application, except that more than one species 
of an invention, not to exceed a reasonable number, may be specifically 
claimed in different claims in one national application, provided the 
application also includes an allowable claim generic to all the claimed 
species and all the claims to species in excess of one are written in 
dependent form (Sec. 1.75) or otherwise include all the limitations of 
the generic claim.
    (b) Where claims to all three categories, product, process of 
making, and process of use, are included in a national application, a 
three way requirement for restriction can only be made where the process 
of making is distinct from the product. If the process of making and the 
product are not distinct, the process of using may be joined with the 
claims directed to the product and the process of making the

[[Page 85]]

product even though a showing of distinctness between the product and 
process of using the product can be made.

[52 FR 20046, May 28, 1987]

Sec. 1.142  Requirement for restriction.

    (a) If two or more independent and distinct inventions are claimed 
in a single application, the examiner in an Office action will require 
the applicant in the reply to that action to elect an invention to which 
the claims will be restricted, this official action being called a 
requirement for restriction (also known as a requirement for division). 
Such requirement will normally be made before any action on the merits; 
however, it may be made at any time before final action.
    (b) Claims to the invention or inventions not elected, if not 
canceled, are nevertheless withdrawn from further consideration by the 
examiner by the election, subject however to reinstatement in the event 
the requirement for restriction is withdrawn or overruled.

[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997]

Sec. 1.143  Reconsideration of requirement.

    If the applicant disagrees with the requirement for restriction, he 
may request reconsideration and withdrawal or modification of the 
requirement, giving the reasons therefor. (See Sec. 1.111.) In 
requesting reconsideration the applicant must indicate a provisional 
election of one invention for prosecution, which invention shall be the 
one elected in the event the requirement becomes final The requirement 
for restriction will be reconsidered on such a request. If the 
requirement is repeated and made final the examiner will at the same 
time act on the claims to the invention elected.

Sec. 1.144  Petition from requirement for restriction.

    After a final requirement for restriction, the applicant, in 
addition to making any reply due on the remainder of the action, may 
petition the Commissioner to review the requirement. Petition may be 
deferred until after final action on or allowance of claims to the 
invention elected, but must be filed not later than appeal. A petition 
will not be considered if reconsideration of the requirement was not 
requested (see Sec. 1.181).

[62 FR 53195, Oct. 10, 1997]

Sec. 1.145  Subsequent presentation of claims for different invention.

    If, after an office action on an application, the applicant presents 
claims directed to an invention distinct from and independent of the 
invention previously claimed, the applicant will be required to restrict 
the claims to the invention previously claimed if the amendment is 
entered, subject to reconsideration and review as provided in 
Secs. 1.143 and 1.144.

Sec. 1.146  Election of species.

    In the first action on an application containing a generic claim to 
a generic invention (genus) and claims to more than one patentably 
distinct species embraced thereby, the examiner may require the 
applicant in the reply to that action to elect a species of his or her 
invention to which his or her claim will be restricted if no claim to 
the genus is found to be allowable. However, if such application 
contains claims directed to more than a reasonable number of species, 
the examiner may require restriction of the claims to not more than a 
reasonable number of species before taking further action in the 
application.

[62 FR 53195, Oct. 10, 1997]

                             Design Patents

Sec. 1.151  Rules applicable.

    The rules relating to applications for patents for other inventions 
or discoveries are also applicable to applications for patents for 
designs except as otherwise provided.

(35 U.S.C. 171)

Sec. 1.152  Design drawings.

    The design must be represented by a drawing that complies with the 
requirements of Sec. 1.84 and must contain a sufficient number of views 
to constitute a complete disclosure of the appearance of the design. 
Appropriate and adequate surface shading should be

[[Page 86]]

used to show the character or contour of the surfaces represented. Solid 
black surface shading is not permitted except when used to represent the 
color black as well as color contrast. Broken lines may be used to show 
visible environmental structure, but may not be used to show hidden 
planes and surfaces that cannot be seen through opaque materials. 
Alternate positions of a design component, illustrated by full and 
broken lines in the same view are not permitted in a design drawing. 
Photographs and ink drawings are not permitted to be combined as formal 
drawings in one application. Photographs submitted in lieu of ink 
drawings in design patent applications must not disclose environmental 
structure but must be limited to the design claimed for the article.

[65 FR 54674, Sept. 8, 2000]

Sec. 1.153  Title, description and claim, oath or declaration.

    (a) The title of the design must designate the particular article. 
No description, other than a reference to the drawing, is ordinarily 
required. The claim shall be in formal terms to the ornamental design 
for the article (specifying name) as shown, or as shown and described. 
More than one claim is neither required nor permitted.
    (b) The oath or declaration required of the applicant must comply 
with Sec. 1.63.

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

[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964; 
48 FR 2712, Jan. 20, 1983]

Sec. 1.154  Arrangement of application elements in a design application.

    (a) The elements of the design application, if applicable, should 
appear in the following order:
    (1) Design application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings or photographs.
    (6) Executed oath or declaration (see Sec. 1.153(b)).
    (b) The specification should include the following sections in 
order:
    (1) Preamble, stating the name of the applicant, title of the 
design, and a brief description of the nature and intended use of the 
article in which the design is embodied.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Description of the figure or figures of the drawing.
    (5) Feature description.
    (6) A single claim.
    (c) The text of the specification sections defined in paragraph (b) 
of this section, if applicable, should be preceded by a section heading 
in uppercase letters without underlining or bold type.

[65 FR 54674, Sept. 8, 2000]

Sec. 1.155  Expedited examination of design applications.

    (a) The applicant may request that the Office expedite the 
examination of a design application. To qualify for expedited 
examination:
    (1) The application must include drawings in compliance with 
Sec. 1.84;
    (2) The applicant must have conducted a preexamination search; and
    (3) The applicant must file a request for expedited examination 
including:
    (i) The fee set forth in Sec. 1.17(k); and
    (ii) A statement that a preexamination search was conducted. The 
statement must also indicate the field of search and include an 
information disclosure statement in compliance with Sec. 1.98.
    (b) The Office will not examine an application that is not in 
condition for examination (e.g., missing basic filing fee) even if the 
applicant files a request for expedited examination under this section.

[65 FR 54674, Sept. 8, 2000]

                              Plant Patents

Sec. 1.161  Rules applicable.

    The rules relating to applications for patent for other inventions 
or discoveries are also applicable to applications for patents for 
plants except as otherwise provided.

[[Page 87]]

Sec. 1.162  Applicant, oath or declaration.

    The applicant for a plant patent must be the person who has invented 
or discovered and asexually reproduced the new and distinct variety of 
plant for which a patent is sought (or as provided in Secs. 1.42, 1.43, 
and 1.47). The oath or declaration required of the applicant, in 
addition to the averments required by Sec. 1.63, must state that he or 
she has asexually reproduced the plant. Where the plant is a newly found 
plant the oath or declaration must also state that it was found in a 
cultivated area.

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

[48 FR 2713, Jan. 20, 1983]

Sec. 1.163  Specification and arrangement of application elements in a 
          plant application.

    (a) The specification must contain as full and complete a disclosure 
as possible of the plant and the characteristics thereof that 
distinguish the same over related known varieties, and its antecedents, 
and must particularly point out where and in what manner the variety of 
plant has been asexually reproduced. For a newly found plant, the 
specification must particularly point out the location and character of 
the area where the plant was discovered.
    (b) The elements of the plant application, if applicable, should 
appear in the following order:
    (1) Plant application transmittal form.
    (2) Fee transmittal form.
    (3) Application data sheet (see Sec. 1.76).
    (4) Specification.
    (5) Drawings (in duplicate).
    (6) Executed oath or declaration (Sec. 1.162).
    (c) The specification should include the following sections in 
order:
    (1) Title of the invention, which may include an introductory 
portion stating the name, citizenship, and residence of the applicant.
    (2) Cross-reference to related applications (unless included in the 
application data sheet).
    (3) Statement regarding federally sponsored research or development.
    (4) Latin name of the genus and species of the plant claimed.
    (5) Variety denomination.
    (6) Background of the invention.
    (7) Brief summary of the invention.
    (8) Brief description of the drawing.
    (9) Detailed botanical description.
    (10) A single claim.
    (11) Abstract of the disclosure.
    (d) The text of the specification or sections defined in paragraph 
(c) of this section, if applicable, should be preceded by a section 
heading in upper case, without underlining or bold type.

[65 FR 54675, Sept. 8, 2000]

Sec. 1.164  Claim.

    The claim shall be in formal terms to the new and distinct variety 
of the specified plant as described and illustrated, and may also recite 
the principal distinguishing characteristics. More than one claim is not 
permitted.

(35 U.S.C. 162)

Sec. 1.165  Plant drawings.

    (a) Plant patent drawings should be artistically and competently 
executed and must comply with the requirements of Sec. 1.84. View 
numbers and reference characters need not be employed unless required by 
the examiner. The drawing must disclose all the distinctive 
characteristics of the plant capable of visual representation.
    (b) The drawings may be in color. The drawing must be in color if 
color is a distinguishing characteristic of the new variety. Two copies 
of color drawings or photographs and a black and white photocopy that 
accurately depicts, to the extent possible, the subject matter shown in 
the color drawing or photograph must be submitted.

[58 FR 38726, July 20, 1993, as amended at 65 FR 57058, Sept. 20, 2000]

Sec. 1.166  Specimens.

    The applicant may be required to furnish specimens of the plant, or 
its flower or fruit, in a quantity and at a time in its stage of growth 
as may be designated, for study and inspection. Such specimens, properly 
packed, must be forwarded in conformity with instructions furnished to 
the applicant. When it is not possible to forward such specimens, plants 
must be made available for official inspection where grown.

(35 U.S.C. 114, 161)

[[Page 88]]

Sec. 1.167  Examination.

    Applications may be submitted by the Patent and Trademark Office to 
the Department of Agriculture for study and report.

[62 FR 53196, Oct. 10, 1997]

                                Reissues

    Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.

Sec. 1.171  Application for reissue.

    An application for reissue must contain the same parts required for 
an application for an original patent, complying with all the rules 
relating thereto except as otherwise provided, and in addition, must 
comply with the requirements of the rules relating to reissue 
applications.

[62 FR 53196, Oct. 10, 1997]

Sec. 1.172  Applicants, assignees.

    (a) A reissue oath must be signed and sworn to or declaration made 
by the inventor or inventors except as otherwise provided (see 
Secs. 1.42, 1.43, 1.47), and must be accompanied by the written consent 
of all assignees, if any, owning an undivided interest in the patent, 
but a reissue oath may be made and sworn to or declaration made by the 
assignee of the entire interest if the application does not seek to 
enlarge the scope of the claims of the original patent. All assignees 
consenting to the reissue must establish their ownership interest in the 
patent by filing in the reissue application a submission in accordance 
with the provisions of Sec. 3.73(b) of this chapter.
    (b) A reissue will be granted to the original patentee, his legal 
representatives or assigns as the interest may appear.

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

[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2713, Jan. 20, 1983; 62 
FR 53196, Oct. 10, 1997]

Sec. 1.173  Reissue specification, drawings, and amendments.

    (a) Contents of a reissue application. An application for reissue 
must contain the entire specification, including the claims, and the 
drawings of the patent. No new matter shall be introduced into the 
application. No reissue patent shall be granted enlarging the scope of 
the claims of the original patent unless applied for within two years 
from the grant of the original patent, pursuant to 35 U.S.C. 251.
    (1) Specification, including claims. The entire specification, 
including the claims, of the patent for which reissue is requested must 
be furnished in the form of a copy of the printed patent, in double 
column format, each page on only one side of a single sheet of paper. If 
an amendment of the reissue application is to be included, it must be 
made pursuant to paragraph (b) of this section. The formal requirements 
for papers making up the reissue application other than those set forth 
in this section are set out in Sec. 1.52. Additionally, a copy of any 
disclaimer (Sec. 1.321), certificate of correction (Secs. 1.322 through 
1.324), or reexamination certificate (Sec. 1.570) issued in the patent 
must be included. (See also Sec. 1.178).
    (2) Drawings. Applicant must submit a clean copy of each drawing 
sheet of the printed patent at the time the reissue application is 
filed. If such copy complies with Sec. 1.84, no further drawings will be 
required. Where a drawing of the reissue application is to include any 
changes relative to the patent being reissued, the changes to the 
drawing must be made in accordance with paragraph (b)(3) of this 
section. The Office will not transfer the drawings from the patent file 
to the reissue application.
    (b) Making amendments in a reissue application. An amendment in a 
reissue application is made either by physically incorporating the 
changes into the specification when the application is filed, or by a 
separate amendment paper. If amendment is made by incorporation, 
markings pursuant to paragraph (d) of this section must be used. If 
amendment is made by an amendment paper, the paper must direct that 
specified changes be made.
    (1) Specification other than the claims. Changes to the 
specification, other than to the claims, must be made by submission of 
the entire text of an added or rewritten paragraph, including markings 
pursuant to paragraph (d) of this section, except that an entire

[[Page 89]]

paragraph may be deleted by a statement deleting the paragraph without 
presentation of the text of the paragraph. The precise point in the 
specification must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the amendment is submitted on 
paper or compact disc (see Secs. 1.52(e)(1) and 1.821(c), but not for 
discs submitted under Sec. 1.821(e)).
    (2) Claims. An amendment paper must include the entire text of each 
claim being changed by such amendment paper and of each claim being 
added by such amendment paper. For any claim changed by the amendment 
paper, a parenthetical expression ``amended,'' ``twice amended,'' etc., 
should follow the claim number. Each changed patent claim and each added 
claim must include markings pursuant to paragraph (d) of this section, 
except that a patent claim or added claim should be canceled by a 
statement canceling the claim without presentation of the text of the 
claim.
    (3) Drawings. Any change to the patent drawings must be submitted as 
a sketch on a separate paper showing the proposed changes in red for 
approval by the examiner. Upon approval by the examiner, new drawings in 
compliance with Sec. 1.84 including the approved changes must be filed. 
Amended figures must be identified as ``Amended,'' and any added figure 
must be identified as ``New.'' In the event that a figure is canceled, 
the figure must be surrounded by brackets and identified as 
``Canceled.''
    (c) Status of claims and support for claim changes. Whenever there 
is an amendment to the claims pursuant to paragraph (b) of this section, 
there must also be supplied, on pages separate from the pages containing 
the changes, the status (i.e., pending or canceled), as of the date of 
the amendment, of all patent claims and of all added claims, and an 
explanation of the support in the disclosure of the patent for the 
changes made to the claims.
    (d) Changes shown by markings. Any changes relative to the patent 
being reissued which are made to the specification, including the 
claims, upon filing, or by an amendment paper in the reissue 
application, must include the following markings:
    (1) The matter to be omitted by reissue must be enclosed in 
brackets; and
    (2) The matter to be added by reissue must be underlined, except for 
amendments submitted on compact discs (Secs. 1.96 and 1.821(c)). Matter 
added by reissue on compact discs must be preceded with ``U>'' and end 
with ``/U>'' to properly identify the material being added.
    (e) Numbering of patent claims preserved. Patent claims may not be 
renumbered. The numbering of any claim added in the reissue application 
must follow the number of the highest numbered patent claim.
    (f) Amendment of disclosure may be required. The disclosure must be 
amended, when required by the Office, to correct inaccuracies of 
description and definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, and the 
drawings.
    (g) Amendments made relative to the patent. All amendments must be 
made relative to the patent specification, including the claims, and 
drawings, which are in effect as of the date of filing of the reissue 
application.

[65 FR 54675, Sept. 8, 2000]

Sec. 1.174  [Reserved]

Sec. 1.175  Reissue oath or declaration.

    (a) The reissue oath or declaration in addition to complying with 
the requirements of Sec. 1.63, must also state that:
    (1) The applicant believes the original patent to be wholly or 
partly inoperative or invalid by reason of a defective specification or 
drawing, or by reason of the patentee claiming more or less than the 
patentee had the right to claim in the patent, stating at least one 
error being relied upon as the basis for reissue; and
    (2) All errors being corrected in the reissue application up to the 
time of filing of the oath or declaration under this paragraph arose 
without any deceptive intention on the part of the applicant.
    (b)(1) For any error corrected, which is not covered by the oath or 
declaration submitted under paragraph (a) of

[[Page 90]]

this section, applicant must submit a supplemental oath or declaration 
stating that every such error arose without any deceptive intention on 
the part of the applicant. Any supplemental oath or declaration required 
by this paragraph must be submitted before allowance and may be 
submitted:
    (i) With any amendment prior to allowance; or
    (ii) In order to overcome a rejection under 35 U.S.C. 251 made by 
the examiner where it is indicated that the submission of a supplemental 
oath or declaration as required by this paragraph will overcome the 
rejection.
    (2) For any error sought to be corrected after allowance, a 
supplemental oath or declaration must accompany the requested correction 
stating that the error(s) to be corrected arose without any deceptive 
intention on the part of the applicant.
    (c) Having once stated an error upon which the reissue is based, as 
set forth in paragraph (a)(1), unless all errors previously stated in 
the oath or declaration are no longer being corrected, a subsequent oath 
or declaration under paragraph (b) of this section need not specifically 
identify any other error or errors being corrected.
    (d) The oath or declaration required by paragraph (a) of this 
section may be submitted under the provisions of Sec. 1.53(f).

[62 FR 53196, Oct. 10, 1997]

Sec. 1.176  Examination of reissue.

    (a) A reissue application will be examined in the same manner as a 
non-reissue, non-provisional application, and will be subject to all the 
requirements of the rules related to non-reissue applications. 
Applications for reissue will be acted on by the examiner in advance of 
other applications.
    (b) Restriction between subject matter of the original patent claims 
and previously unclaimed subject matter may be required (restriction 
involving only subject matter of the original patent claims will not be 
required). If restriction is required, the subject matter of the 
original patent claims will be held to be constructively elected unless 
a disclaimer of all the patent claims is filed in the reissue 
application, which disclaimer cannot be withdrawn by applicant.

[65 FR 54676, Sept. 8, 2000]

Sec. 1.177  Issuance of multiple reissue patents.

    (a) The Office may reissue a patent as multiple reissue patents. If 
applicant files more than one application for the reissue of a single 
patent, each such application must contain or be amended to contain in 
the first sentence of the specification a notice stating that more than 
one reissue application has been filed and identifying each of the 
reissue applications by relationship, application number and filing 
date. The Office may correct by certificate of correction under 
Sec. 1.322 any reissue patent resulting from an application to which 
this paragraph applies that does not contain the required notice.
    (b) If applicant files more than one application for the reissue of 
a single patent, each claim of the patent being reissued must be 
presented in each of the reissue applications as an amended, unamended, 
or canceled (shown in brackets) claim, with each such claim bearing the 
same number as in the patent being reissued. The same claim of the 
patent being reissued may not be presented in its original unamended 
form for examination in more than one of such multiple reissue 
applications. The numbering of any added claims in any of the multiple 
reissue applications must follow the number of the highest numbered 
original patent claim.
    (c) If any one of the several reissue applications by itself fails 
to correct an error in the original patent as required by 35 U.S.C. 251 
but is otherwise in condition for allowance, the Office may suspend 
action in the allowable application until all issues are resolved as to 
at least one of the remaining reissue applications. The Office may also 
merge two or more of the multiple reissue applications into a single 
reissue application. No reissue application containing only unamended 
patent claims and not correcting an error in the original patent will be 
passed to issue by itself.

[65 FR 54676, Sept. 8, 2000]

[[Page 91]]

Sec. 1.178  Original patent; continuing duty of applicant.

    (a) The application for a reissue should be accompanied by either an 
offer to surrender the original patent, or the original patent itself, 
or if the original is lost or inaccessible, by a statement to that 
effect. The application may be accepted for examination in the absence 
of the original patent or the statement, but one or the other must be 
supplied before the application is allowed. If a reissue application is 
refused, the original patent, if surrendered, will be returned to 
applicant upon request.
    (b) In any reissue application before the Office, the applicant must 
call to the attention of the Office any prior or concurrent proceedings 
in which the patent (for which reissue is requested) is or was involved, 
such as interferences, reissues, reexaminations, or litigations and the 
results of such proceedings (see also Sec. 1.173(a)(1)).

[65 FR 54676, Sept. 8, 2000]

Sec. 1.179  Notice of reissue application.

    When an application for a reissue is filed, there will be placed in 
the file of the original patent a notice stating that an application for 
reissue has been filed. When the reissue is granted or the reissue 
application is otherwise terminated, the fact will be added to the 
notice in the file of the original patent.

                Petitions and Action by the Commissioner

    Authority: 35 U.S.C. 6; 15 U.S.C. 1113, 1123.

Sec. 1.181  Petition to the Commissioner.

    (a) Petition may be taken to the Commissioner:
    (1) From any action or requirement of any examiner in the ex parte 
prosecution of an application, or in the ex parte or inter partes 
prosecution of a reexamination proceeding which is not subject to appeal 
to the Board of Patent Appeals and Interferences or to the court;
    (2) In cases in which a statute or the rules specify that the matter 
is to be determined directly by or reviewed by the Commissioner; and
    (3) To invoke the supervisory authority of the Commissioner in 
appropriate circumstances. For petitions in interferences, see 
Sec. 1.644.
    (b) Any such petition must contain a statement of the facts involved 
and the point or points to be reviewed and the action requested. Briefs 
or memoranda, if any, in support thereof should accompany or be embodied 
in the petition; and where facts are to be proven, the proof in the form 
of affidavits or declarations (and exhibits, if any) must accompany the 
petition.
    (c) When a petition is taken from an action or requirement of an 
examiner in the ex parte prosecution of an application, or in the ex 
parte or inter partes prosecution of a reexamination proceeding, it may 
be required that there have been a proper request for reconsideration 
(Sec. 1.111) and a repeated action by the examiner. The examiner may be 
directed by the Commissioner to furnish a written statement, within a 
specified time, setting forth the reasons for his or her decision upon 
the matters averred in the petition, supplying a copy to the petitioner.
    (d) Where a fee is required for a petition to the Commissioner the 
appropriate section of this part will so indicate. If any required fee 
does not accompany the petition, the petition will be dismissed.
    (e) Oral hearing will not be granted except when considered 
necessary by the Commissioner.
    (f) The mere filing of a petition will not stay any period for reply 
that may be running against the application, nor act as a stay of other 
proceedings. Any petition under this part not filed within two months of 
the mailing date of the action or notice from which relief is requested 
may be dismissed as untimely, except as otherwise provided. This two-
month period is not extendable.
    (g) The Commissioner may delegate to appropriate Patent and 
Trademark Office officials the determination of petitions.

[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969; 
47 FR 41278, Sept. 17, 1982; 49 FR 48452, Dec. 12, 1984; 65 FR 54676, 
Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000]

[[Page 92]]

Sec. 1.182  Questions not specifically provided for.

    All situations not specifically provided for in the regulations of 
this part will be decided in accordance with the merits of each 
situation by or under the authority of the Commissioner, subject to such 
other requirements as may be imposed, and such decision will be 
communicated to the interested parties in writing. Any petition seeking 
a decision under this section must be accompanied by the petition fee 
set forth in Sec. 1.17(h).

[62 FR 53196, Oct. 10, 1997]

Sec. 1.183  Suspension of rules.

    In an extraordinary situation, when justice requires, any 
requirement of the regulations in this part which is not a requirement 
of the statutes may be suspended or waived by the Commissioner or the 
Commissioner's designee, sua sponte, or on petition of the interested 
party, subject to such other requirements as may be imposed. Any 
petition under this section must be accompanied by the petition fee set 
forth in Sec. 1.17(h).

[47 FR 41278, Sept. 17, 1982]

Sec. 1.184  [Reserved]

         Appeal to the Board of Patent Appeals and Interferences

    Authority: Secs. 1.191 to 1.198 also issued under 35 U.S.C. 134.

Sec. 1.191  Appeal to Board of Patent Appeals and Interferences.

    (a) Every applicant for a patent or for reissue of a patent, and 
every owner of a patent under ex parte reexamination filed under 
Sec. 1.510 for a patent that issued from an original application filed 
in the United States before November 29, 1999, any of whose claims has 
been twice or finally (Sec. 1.113) rejected, may appeal from the 
decision of the examiner to the Board of Patent Appeals and 
Interferences by filing a notice of appeal and the fee set forth in 
Sec. 1.17(b) within the time period provided under Secs. 1.134 and 1.136 
for reply. Notwithstanding the above, for an ex parte reexamination 
proceeding filed under Sec. 1.510 for a patent that issued from an 
original application filed in the United States on or after November 29, 
1999, no appeal may be filed until the claims have been finally rejected 
(Sec. 1.113). Appeals to the Board of Patent Appeals and Interferences 
in inter partes reexamination proceedings filed under Sec. 1.913 are 
controlled by Secs. 1.959 through 1.981. Sections 1.191 through 1.198 
are not applicable to appeals in inter partes reexamination proceedings 
filed under Sec. 1.913.
    (b) The signature requirement of Sec. 1.33 does not apply to a 
notice of appeal filed under this section.
    (c) An appeal when taken must be taken from the rejection of all 
claims under rejection which the applicant or patent owner proposes to 
contest. Questions relating to matters not affecting the merits of the 
invention may be required to be settled before an appeal can be 
considered.
    (d) The time periods set forth in Secs. 1.191 and 1.192 are subject 
to the provisions of Sec. 1.136 for patent applications and 
Sec. 1.550(c) for reexamination proceedings. The time periods set forth 
in Secs. 1.193, 1.194, 1.196 and 1.197 are subject to the provisions of 
Sec. 1.136(b) for patent applications or Sec. 1.550(c) for reexamination 
proceedings. See Sec. 1.304(a) for extensions of time for filing a 
notice of appeal to the U.S. Court of Appeals for the Federal Circuit or 
for commencing a civil action.
    (e) Jurisdiction over the application or patent under reexamination 
passes to the Board of Patent Appeals and Interferences upon transmittal 
of the file, including all briefs and examiner's answers, to the Board. 
Prior to the entry of a decision on the appeal, the Commissioner may sua 
sponte order the application remanded to the examiner.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[46 FR 29183, May 29, 1981, as amended at 49 FR 555, Jan. 4, 1984; 49 FR 
48453, Dec. 12, 1984; 54 FR 29552, July 13, 1989; 58 FR 54510, Oct. 22, 
1993; 62 FR 53196, Oct. 10, 1997; 65 FR 76774, Dec. 7, 2000]

Sec. 1.192  Appellant's brief.

    (a) Appellant must, within two months from the date of the notice of 
appeal under Sec. 1.191 or within the time allowed for reply to the 
action from

[[Page 93]]

which the appeal was taken, if such time is later, file a brief in 
triplicate. The brief must be accompanied by the fee set forth in 
Sec. 1.17(c) and must set forth the authorities and arguments on which 
appellant will rely to maintain the appeal. Any arguments or authorities 
not included in the brief will be refused consideration by the Board of 
Patent Appeals and Interferences, unless good cause is shown.
    (b) On failure to file the brief, accompanied by the requisite fee, 
within the time allowed, the appeal shall stand dismissed.
    (c) The brief shall contain the following items under appropriate 
headings and in the order indicated below unless the brief is filed by 
an applicant who is not represented by a registered practitioner:
    (1) Real party in interest. A statement identifying the real party 
in interest, if the party named in the caption of the brief is not the 
real party in interest.
    (2) Related appeals and interferences. A Statement identifying by 
number and filing date all other appeals or interferences known to 
appellant, the appellant's legal representative, or assignee which will 
directly affect or be directly affected by or have a bearing on the 
Board's decision in the pending appeal.
    (3) Status of claims. A statement of the status of all the claims, 
pending or cancelled, and identifying the claims appealed.
    (4) Status of amendments. A statement of the status of any amendment 
filed subsequent to final rejection.
    (5) Summary of invention. A concise explanation of the invention 
defined in the claims involved in the appeal, which shall refer to the 
specification by page and line number, and to the drawing, if any, by 
reference characters.
    (6) Issues. A concise statement of the issues presented for review.
    (7) Grouping of claims. For each ground of rejection which appellant 
contests and which applies to a group of two or more claims, the Board 
shall select a single claim from the group and shall decide the appeal 
as to the ground of rejection on the basis of that claim alone unless a 
statement is included that the claims of the group do not stand or fall 
together and, in the argument under paragraph (c)(8) of this section, 
appellant explains why the claims of the group are believed to be 
separately patentable. Merely pointing out differences in what the 
claims cover is not an argument as to why the claims are separately 
patentable.
    (8) Argument. The contentions of appellant with respect to each of 
the issues presented for review in paragraph (c)(6) of this section, and 
the basis therefor, with citations of the authorities, statutes, and 
parts of the record relied on. Each issue should be treated under a 
separate heading.
    (i) For each rejection under 35 U.S.C. 112, first paragraph, the 
argument shall specify the errors in the rejection and how the first 
paragraph of 35 U.S.C. 112 is complied with, including, as appropriate, 
how the specification and drawings, if any,
    (A) Describe the subject matter defined by each of the rejected 
claims,
    (B) Enable any person skilled in the art to make and use the subject 
matter defined by each of the rejected claims, and
    (C) Set forth the best mode contemplated by the inventor of carrying 
out his or her invention.
    (ii) For each rejection under 35 U.S.C. 112, second paragraph, the 
argument shall specify the errors in the rejection and how the claims 
particularly point out and distinctly claim the subject matter which 
applicant regards as the invention.
    (iii) For each rejection under 35 U.S.C. 102, the argument shall 
specify the errors in the rejection and why the rejected claims are 
patentable under 35 U.S.C. 102, including any specific limitations in 
the rejected claims which are not described in the prior art relied upon 
in the rejection.
    (iv) For each rejection under 35 U.S.C. 103, the argument shall 
specify the errors in the rejection and, if appropriate, the specific 
limitations in the rejected claims which are not described in the prior 
art relied on in the rejection, and shall explain how such limitations 
render the claimed subject matter unobvious over the prior art. If the 
rejection is based upon a combination of references, the argument shall 
explain why the references, taken as a

[[Page 94]]

whole, do not suggest the claimed subject matter, and shall include, as 
may be appropriate, an explanation of why features disclosed in one 
reference may not properly be combined with features disclosed in 
another reference. A general argument that all the limitations are not 
described in a single reference does not satisfy the requirements of 
this paragraph.
    (v) For any rejection other than those referred to in paragraphs 
(c)(8) (i) to (iv) of this section, the argument shall specify the 
errors in the rejection and the specific limitations in the rejected 
claims, if appropriate, or other reasons, which cause the rejection to 
be in error.
    (9) Appendix. An appendix containing a copy of the claims involved 
in the appeal.
    (d) If a brief is filed which does not comply with all the 
requirements of paragraph (c) of this section, appellant will be 
notified of the reasons for non-compliance and provided with a period of 
one month within which to file an amended brief. If appellant does not 
file an amended brief during the one-month period, or files an amended 
brief which does not overcome all the reasons for non-compliance stated 
in the notification, the appeal will stand dismissed.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[36 FR 5850, Mar. 30, 1971, as amended at 53 FR 23734, June 23, 1988; 58 
FR 54510, Oct. 22, 1993; 60 FR 14518, Mar. 17, 1995; 62 FR 53196, Oct. 
10, 1997]

Sec. 1.193  Examiner's answer and reply brief.

    (a)(1) The primary examiner may, within such time as may be directed 
by the Commissioner, furnish a written statement in answer to 
appellant's brief including such explanation of the invention claimed 
and of the references and grounds of rejection as may be necessary, 
supplying a copy to appellant. If the primary examiner finds that the 
appeal is not regular in form or does not relate to an appealable 
action, the primary examiner shall so state.
    (2) An examiner's answer must not include a new ground of rejection, 
but if an amendment under Sec. 1.116 proposes to add or amend one or 
more claims and appellant was advised that the amendment under 
Sec. 1.116 would be entered for purposes of appeal and which individual 
rejection(s) set forth in the action from which the appeal was taken 
would be used to reject the added or amended claim(s), then the appeal 
brief must address the rejection(s) of the claim(s) added or amended by 
the amendment under Sec. 1.116 as appellant was so advised and the 
examiner's answer may include the rejection(s) of the claim(s) added or 
amended by the amendment under Sec. 1.116 as appellant was so advised. 
The filing of an amendment under Sec. 1.116 which is entered for 
purposes of appeal represents appellant's consent that when so advised 
any appeal proceed on those claim(s) added or amended by the amendment 
under Sec. 1.116 subject to any rejection set forth in the action from 
which the appeal was taken.
    (b)(1) Appellant may file a reply brief to an examiner's answer or a 
supplemental examiner's answer within two months from the date of such 
examiner's answer or supplemental examiner's answer. See Sec. 1.136(b) 
for extensions of time for filing a reply brief in a patent application 
and Sec. 1.550(c) for extensions of time for filing a reply brief in a 
reexamination proceeding. The primary examiner must either acknowledge 
receipt and entry of the reply brief or withdraw the final rejection and 
reopen prosecution to respond to the reply brief. A supplemental 
examiner's answer is not permitted, unless the application has been 
remanded by the Board of Patent Appeals and Interferences for such 
purpose.
    (2) Where prosecution is reopened by the primary examiner after an 
appeal or reply brief has been filed, appellant must exercise one of the 
following two options to avoid abandonment of the application:
    (i) File a reply under Sec. 1.111, if the Office action is not 
final, or a reply under Sec. 1.113, if the Office action is final; or
    (ii) Request reinstatement of the appeal. If reinstatement of the 
appeal is requested, such request must be accompanied by a supplemental 
appeal brief, but no new amendments, affidavits

[[Page 95]]

(Secs. 1.130, 1.131 or 1.132) or other evidence are permitted.

[62 FR 53197, Oct. 10, 1997, as amended at 65 FR 54676, Sept. 8, 2000]

Sec. 1.194  Oral hearing.

    (a) An oral hearing should be requested only in those circumstances 
in which appellant considers such a hearing necessary or desirable for a 
proper presentation of the appeal. An appeal decided without an oral 
hearing will receive the same consideration by the Board of Patent 
Appeals and Interferences as appeals decided after oral hearing.
    (b) If appellant desires an oral hearing, appellant must file, in a 
separate paper, a written request for such hearing accompanied by the 
fee set forth in Sec. 1.17(d) within two months from the date of the 
examiner's answer. If appellant requests an oral hearing and submits 
therewith the fee set forth in Sec. 1.17(d), an oral argument may be 
presented by, or on behalf of, the primary examiner if considered 
desirable by either the primary examiner or the Board. See Sec. 1.136(b) 
for extensions of time for requesting an oral hearing in a patent 
application and Sec. 1.550(c) for extensions of time for requesting an 
oral hearing in a reexamination proceeding.
    (c) If no request and fee for oral hearing have been timely filed by 
appellant, the appeal will be assigned for consideration and decision. 
If appellant has requested an oral hearing and has submitted the fee set 
forth in Sec. 1.17(d), a day of hearing will be set, and due notice 
thereof given to appellant and to the primary examiner. A hearing will 
be held as stated in the notice, and oral argument will be limited to 
twenty minutes for appellant and fifteen minutes for the primary 
examiner unless otherwise ordered before the hearing begins. If the 
Board decides that a hearing is not necessary, the Board will so notify 
appellant.

[62 FR 53197, Oct. 10, 1997]

Sec. 1.195  Affidavits or declarations after appeal.

    Affidavits, declarations, or exhibits submitted after the case has 
been appealed will not be admitted without a showing of good and 
sufficient reasons why they were not earlier presented.

[34 FR 18858, Nov. 26, 1969]

Sec. 1.196  Decision by the Board of Patent Appeals and Interferences.

    (a) The Board of Patent Appeals and Interferences, in its decision, 
may affirm or reverse the decision of the examiner in whole or in part 
on the grounds and on the claims specified by the examiner or remand the 
application to the examiner for further consideration. The affirmance of 
the rejection of a claim on any of the grounds specified constitutes a 
general affirmance of the decision of the examiner on that claim, except 
as to any ground specifically reversed.
    (b) Should the Board of Patent Appeals and Interferences have 
knowledge of any grounds not involved in the appeal for rejecting any 
pending claim, it may include in the decision a statement to that effect 
with its reasons for so holding, which statement constitutes a new 
ground of rejection of the claim. A new ground of rejection shall not be 
considered final for purposes of judicial review. When the Board of 
Patent Appeals and Interferences makes a new ground of rejection, the 
appellant, within two months from the date of the decision, must 
exercise one of the following two options with respect to the new ground 
of rejection to avoid termination of proceedings (Sec. 1.197(c)) as to 
the rejected claims:
    (1) Submit an appropriate amendment of the claims so rejected or a 
showing of facts relating to the claims so rejected, or both, and have 
the matter reconsidered by the examiner, in which event the application 
will be remanded to the examiner. The new ground of rejection is binding 
upon the examiner unless an amendment or showing of facts not previously 
of record be made which, in the opinion of the examiner, overcomes the 
new ground of rejection stated in the decision. Should the examiner 
reject the claims, appellant may again appeal pursuant to Secs. 1.191 
through 1.195 to the Board of Patent Appeals and Interferences.
    (2) Request that the application be reheard under Sec. 1.197(b) by 
the Board of

[[Page 96]]

Patent Appeals and Interferences upon the same record. The request for 
rehearing must address the new ground of rejection and state with 
particularity the points believed to have been misapprehended or 
overlooked in rendering the decision and also state all other grounds 
upon which rehearing is sought. Where request for such rehearing is 
made, the Board of Patent Appeals and Interferences shall rehear the new 
ground of rejection and, if necessary, render a new decision which shall 
include all grounds of rejection upon which a patent is refused. The 
decision on rehearing is deemed to incorporate the earlier decision for 
purposes of appeal, except for those portions specifically withdrawn on 
rehearing, and is final for the purpose of judicial review, except when 
noted otherwise in the decision.
    (c) Should the decision of the Board of Patent Appeals and 
Interferences include an explicit statement that a claim may be allowed 
in amended form, appellant shall have the right to amend in conformity 
with such statement which shall be binding on the examiner in the 
absence of new references or grounds of rejection.
    (d) The Board of Patent Appeals and Interferences may require 
appellant to address any matter that is deemed appropriate for a 
reasoned decision on the pending appeal. Appellant will be given a non-
extendable time period within which to respond to such a requirement.
    (e) Whenever a decision of the Board of Patent Appeals and 
Interferences includes or allows a remand, that decision shall not be 
considered a final decision. When appropriate, upon conclusion of 
proceedings on remand before the examiner, the Board of Patent Appeals 
and Interferences may enter an order otherwise making its decision 
final.
    (f) See Sec. 1.136(b) for extensions of time to take action under 
this section in a patent application and Sec. 1.550(c) for extensions of 
time in a reexamination proceeding.

[49 FR 48453, Dec. 12, 1984, as amended at 54 FR 29552, July 13, 1989; 
58 FR 54510, Oct. 22, 1993; 62 FR 53197, Oct. 10, 1997]

Sec. 1.197  Action following decision.

    (a) After decision by the Board of Patent Appeals and Interferences, 
the application will be returned to the examiner, subject to appellant's 
right of appeal or other review, for such further action by appellant or 
by the examiner, as the condition of the application may require, to 
carry into effect the decision.
    (b) Appellant may file a single request for rehearing within two 
months from the date of the original decision, unless the original 
decision is so modified by the decision on rehearing as to become, in 
effect, a new decision, and the Board of Patent Appeals and 
Interferences so states. The request for rehearing must state with 
particularity the points believed to have been misapprehended or 
overlooked in rendering the decision and also state all other grounds 
upon which rehearing is sought. See Sec. 1.136(b) for extensions of time 
for seeking rehearing in a patent application and Sec. 1.550(c) for 
extensions of time for seeking rehearing in a reexamination proceeding.
    (c) Termination of proceedings. Proceedings are considered 
terminated by the dismissal of an appeal or the failure to timely file 
an appeal to the court or a civil action (Sec. 1.304) except:
    (1) Where claims stand allowed in an application or
    (2) Where the nature of the decision requires further action by the 
examiner.

The date of termination of proceedings is the date on which the appeal 
is dismissed or the date on which the time for appeal to the court or 
review by civil action (Sec. 1.304) expires. If an appeal to the court 
or a civil action has been filed, proceedings are considered terminated 
when the appeal or civil action is terminated. An appeal to the U.S. 
Court of Appeals for the Federal Circuit is terminated when the mandate 
is received by the Office. A civil action is terminated when the time to 
appeal the judgment expires.

(35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C. 1113, 1123)

[46 FR 29184, May 29, 1981, as amended at 49 FR 48453, Dec. 12, 1984; 54 
FR 29552, July 13, 1989; 58 FR 54510, Oct. 22, 1993; 62 FR 53198, Oct. 
10, 1997]

[[Page 97]]

Sec. 1.198  Reopening after decision.

    Cases which have been decided by the Board of Patent Appeals and 
Interferences will not be reopened or reconsidered by the primary 
examiner except under the provisions of Sec. 1.114 or Sec. 1.196 without 
the written authority of the Commissioner, and then only for the 
consideration of matters not already adjudicated, sufficient cause being 
shown.

[65 FR 14873, Mar. 20, 2000]

Sec. 1.198  Reopening after decision.

    Cases which have been decided by the Board of Patent Appeals and 
Interferences will not be reopened or reconsidered by the primary 
examiner except under the provisions of Sec. 1.196 without the written 
authority of the Commissioner, and then only for the consideration of 
matters not already adjudicated, sufficient cause being shown.

[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48453, Dec. 12, 1984]

                       Publication of Applications

    Source: Sections 1.211, 1.213, 1.215, 1.217, 1.219, and 1.221 appear 
at 65 FR 57058, Sept. 20, 2000, unless otherwise noted.

Sec. 1.211  Publication of applications.

    (a) Each U.S. national application for patent filed in the Office 
under 35 U.S.C. 111(a) and each international application in compliance 
with 35 U.S.C. 371 will be published promptly after the expiration of a 
period of eighteen months from the earliest filing date for which a 
benefit is sought under title 35, United States Code, unless:
    (1) The application is recognized by the Office as no longer 
pending;
    (2) The application is national security classified (see 
Sec. 5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under 
national security review;
    (3) The application has issued as a patent in sufficient time to be 
removed from the publication process; or
    (4) The application was filed with a nonpublication request in 
compliance with Sec. 1.213(a).
    (b) Provisional applications under 35 U.S.C. 111(b) shall not be 
published, and design applications under 35 U.S.C. chapter 16 and 
reissue applications under 35 U.S.C. chapter 25 shall not be published 
under this section.
    (c) An application filed under 35 U.S.C. 111(a) will not be 
published until it includes the basic filing fee (Sec. 1.16(a) or 
1.16(g)), any English translation required by Sec. 1.52(d), and an 
executed oath or declaration under Sec. 1.63. The Office may delay 
publishing any application until it includes a specification having 
papers in compliance with Sec. 1.52 and an abstract (Sec. 1.72(b)), 
drawings in compliance with Sec. 1.84, and a sequence listing in 
compliance with Secs. 1.821 through 1.825 (if applicable), and until any 
petition under Sec. 1.47 is granted.
    (d) The Office may refuse to publish an application, or to include a 
portion of an application in the patent application publication 
(Sec. 1.215), if publication of the application or portion thereof would 
violate Federal or state law, or if the application or portion thereof 
contains offensive or disparaging material.
    (e) The publication fee set forth in Sec. 1.18(d) must be paid in 
each application published under this section before the patent will be 
granted. If an application is subject to publication under this section, 
the sum specified in the notice of allowance under Sec. 1.311 will also 
include the publication fee which must be paid within three months from 
the date of mailing of the notice of allowance to avoid abandonment of 
the application. This three-month period is not extendable. If the 
application is not published under this section, the publication fee (if 
paid) will be refunded.

Sec. 1.213  Nonpublication request.

    (a) If the invention disclosed in an application has not been and 
will not be the subject of an application filed in another country, or 
under a multilateral international agreement, that requires publication 
of applications eighteen months after filing, the application will not 
be published under 35 U.S.C. 122(b) and Sec. 1.211 provided:
    (1) A request (nonpublication request) is submitted with the 
application upon filing;
    (2) The request states in a conspicuous manner that the application

[[Page 98]]

is not to be published under 35 U.S.C. 122(b);
    (3) The request contains a certification that the invention 
disclosed in the application has not been and will not be the subject of 
an application filed in another country, or under a multilateral 
international agreement, that requires publication at eighteen months 
after filing; and
    (4) The request is signed in compliance with Sec. 1.33(b).
    (b) The applicant may rescind a nonpublication request at any time. 
A request to rescind a nonpublication request under paragraph (a) of 
this section must:
    (1) Identify the application to which it is directed;
    (2) State in a conspicuous manner that the request that the 
application is not to be published under 35 U.S.C. 122(b) is rescinded; 
and
    (3) Be signed in compliance with Sec. 1.33(b).
    (c) If an applicant who has submitted a nonpublication request under 
paragraph (a) of this section subsequently files an application directed 
to the invention disclosed in the application in which the 
nonpublication request was submitted in another country, or under a 
multilateral international agreement, that requires publication of 
applications eighteen months after filing, the applicant must notify the 
Office of such filing within forty-five days after the date of the 
filing of such foreign or international application. The failure to 
timely notify the Office of the filing of such foreign or international 
application shall result in abandonment of the application in which the 
nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).

Sec. 1.215  Patent application publication.

    (a) The publication of an application under 35 U.S.C. 122(b) shall 
include a patent application publication. The date of publication shall 
be indicated on the patent application publication. The patent 
application publication will be based upon the application papers 
deposited on the filing date of the application, as well as the executed 
oath or declaration submitted to complete the application, and any 
application papers or drawings submitted in reply to a preexamination 
notice requiring a title and abstract in compliance with Sec. 1.72, 
application papers in compliance with Sec. 1.52, drawings in compliance 
with Sec. 1.84, or a sequence listing in compliance with Secs. 1.821 
through 1.825, except as otherwise provided in this section. The patent 
application publication will not include any amendments, including 
preliminary amendments, unless applicant supplies a copy of the 
application containing the amendment pursuant to paragraph (c) of this 
section.
    (b) If applicant wants the patent application publication to include 
assignee information, the applicant must include the assignee 
information on the application transmittal sheet or the application data 
sheet (Sec. 1.76). Assignee information may not be included on the 
patent application publication unless this information is provided on 
the application transmittal sheet or application data sheet included 
with the application on filing. Providing this information on the 
application transmittal sheet or the application data sheet does not 
substitute for compliance with any requirement of part 3 of this chapter 
to have an assignment recorded by the Office.
    (c) At applicant's option, the patent application publication will 
be based upon the copy of the application (specification, drawings, and 
oath or declaration) as amended during examination, provided that 
applicant supplies such a copy in compliance with the Office electronic 
filing system requirements within one month of the actual filing date of 
the application or fourteen months of the earliest filing date for which 
a benefit is sought under title 35, United States Code, whichever is 
later.
    (d) If the copy of the application submitted pursuant to paragraph 
(c) of this section does not comply with the Office electronic filing 
system requirements, the Office will publish the application as provided 
in paragraph (a) of this section. If, however, the Office has not 
started the publication process, the Office may use an untimely filed 
copy of the application supplied by the applicant under paragraph (c) of 
this section in creating the patent application publication.

[[Page 99]]

Sec. 1.217  Publication of a redacted copy of an application.

    (a) If an applicant has filed applications in one or more foreign 
countries, directly or through a multilateral international agreement, 
and such foreign-filed applications or the description of the invention 
in such foreign-filed applications is less extensive than the 
application or description of the invention in the application filed in 
the Office, the applicant may submit a redacted copy of the application 
filed in the Office for publication, eliminating any part or description 
of the invention that is not also contained in any of the corresponding 
applications filed in a foreign country. The Office will publish the 
application as provided in Sec. 1.215(a) unless the applicant files a 
redacted copy of the application in compliance with this section within 
sixteen months after the earliest filing date for which a benefit is 
sought under title 35, United States Code.
    (b) The redacted copy of the application must be submitted in 
compliance with the Office electronic filing system requirements. The 
title of the invention in the redacted copy of the application must 
correspond to the title of the application at the time the redacted copy 
of the application is submitted to the Office. If the redacted copy of 
the application does not comply with the Office electronic filing system 
requirements, the Office will publish the application as provided in 
Sec. 1.215(a).
    (c) The applicant must also concurrently submit in paper 
(Sec. 1.52(a)) to be filed in the application:
    (1) A certified copy of each foreign-filed application that 
corresponds to the application for which a redacted copy is submitted;
    (2) A translation of each such foreign-filed application that is in 
a language other than English, and a statement that the translation is 
accurate;
    (3) A marked-up copy of the application showing the redactions in 
brackets; and
    (4) A certification that the redacted copy of the application 
eliminates only the part or description of the invention that is not 
contained in any application filed in a foreign country, directly or 
through a multilateral international agreement, that corresponds to the 
application filed in the Office.
    (d) The Office will provide a copy of the complete file wrapper and 
contents of an application for which a redacted copy was submitted under 
this section to any person upon written request pursuant to 
Sec. 1.14(c)(2), unless applicant complies with the requirements of 
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
    (1) Applicant must accompany the submission required by paragraph 
(c) of this section with the following:
    (i) A copy of any Office correspondence previously received by 
applicant including any desired redactions, and a second copy of all 
Office correspondence previously received by applicant showing the 
redacted material in brackets; and
    (ii) A copy of each submission previously filed by the applicant 
including any desired redactions, and a second copy of each submission 
previously filed by the applicant showing the redacted material in 
brackets.
    (2) In addition to providing the submission required by paragraphs 
(c) and (d)(1) of this section, applicant must:
    (i) Within one month of the date of mailing of any correspondence 
from the Office, file a copy of such Office correspondence including any 
desired redactions, and a second copy of such Office correspondence 
showing the redacted material in brackets; and
    (ii) With each submission by the applicant, include a copy of such 
submission including any desired redactions, and a second copy of such 
submission showing the redacted material in brackets.
    (3) Each submission under paragraph (d)(1) or (d)(2) of this 
paragraph must also be accompanied by the processing fee set forth in 
Sec. 1.17(i) and a certification that the redactions are limited to the 
elimination of material that is relevant only to the part or description 
of the invention that was not contained in the redacted copy of the 
application submitted for publication.
    (e) The provisions of Sec. 1.8 do not apply to the time periods set 
forth in this section.

[[Page 100]]

Sec. 1.219  Early publication.

    Applications that will be published under Sec. 1.211 may be 
published earlier than as set forth in Sec. 1.211(a) at the request of 
the applicant. Any request for early publication must be accompanied by 
the publication fee set forth in Sec. 1.18(d). If the applicant does not 
submit a copy of the application in compliance with the Office 
electronic filing system requirements pursuant to Sec. 1.215(c), the 
Office will publish the application as provided in Sec. 1.215(a). No 
consideration will be given to requests for publication on a certain 
date, and such requests will be treated as a request for publication as 
soon as possible.

Sec. 1.221  Voluntary publication or republication of patent application 
          publication.

    (a) Any request for publication of an application filed before, but 
pending on, November 29, 2000, and any request for republication of an 
application previously published under Sec. 1.211, must include a copy 
of the application in compliance with the Office electronic filing 
system requirements and be accompanied by the publication fee set forth 
in Sec. 1.18(d) and the processing fee set forth in Sec. 1.17(i). If the 
request does not comply with the requirements of this paragraph or the 
copy of the application does not comply with the Office electronic 
filing system requirements, the Office will not publish the application 
and will refund the publication fee.
    (b) The Office will grant a request for a corrected or revised 
patent application publication other than as provided in paragraph (a) 
of this section only when the Office makes a material mistake which is 
apparent from Office records. Any request for a corrected or revised 
patent application publication other than as provided in paragraph (a) 
of this section must be filed within two months from the date of the 
patent application publication. This period is not extendable.

                        Miscellaneous Provisions

Sec. 1.248  Service of papers; manner of service; proof of service in 
          cases other than interferences.

    (a) Service of papers must be on the attorney or agent of the party 
if there be such or on the party if there is no attorney or agent, and 
may be made in any of the following ways:
    (1) By delivering a copy of the paper to the person served;
    (2) By leaving a copy at the usual place of business of the person 
served with someone in his employment;
    (3) When the person served has no usual place of business, by 
leaving a copy at the person's residence, with some person of suitable 
age and discretion who resides there;
    (4) Transmission by first class mail. When service is by mail the 
date of mailing will be regarded as the date of service;
    (5) Whenever it shall be satisfactorily shown to the Commissioner 
that none of the above modes of obtaining or serving the paper is 
practicable, service may be by notice published in the Official Gazette.
    (b) Papers filed in the Patent and Trademark Office which are 
required to be served shall contain proof of service. Proof of service 
may appear on or be affixed to papers filed. Proof of service shall 
include the date and manner of service. In the case of personal service, 
proof of service shall also include the name of any person served, 
certified by the person who made service. Proof of service may be made 
by:
    (1) An acknowledgement of service by or on behalf of the person 
served or
    (2) A statement signed by the attorney or agent containing the 
information required by this section.
    (c) See Sec. 1.646 for service of papers in interferences.

[46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984]

Sec. 1.251  Unlocatable file.

    (a) In the event that the Office cannot locate the file of an 
application, patent, or other patent-related proceeding after a 
reasonable search, the

[[Page 101]]

Office will notify the applicant or patentee and set a time period 
within which the applicant or patentee must comply with the notice in 
accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this 
section.
    (1) Applicant or patentee may comply with a notice under this 
section by providing:
    (i) A copy of the applicant's or patentee's record (if any) of all 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding (except for U.S. 
patent documents);
    (ii) A list of such correspondence; and
    (iii) A statement that the copy is a complete and accurate copy of 
the applicant's or patentee's record of all of the correspondence 
between the Office and the applicant or patentee for such application, 
patent, or other proceeding (except for U.S. patent documents), and 
whether applicant or patentee is aware of any correspondence between the 
Office and the applicant or patentee for such application, patent, or 
other proceeding that is not among applicant's or patentee's records.
    (2) Applicant or patentee may comply with a notice under this 
section by:
    (i) Producing the applicant's or patentee's record (if any) of all 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding for the Office to copy 
(except for U.S. patent documents); and
    (ii) Providing a statement that the papers produced by applicant or 
patentee are applicant's or patentee's complete record of all of the 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding (except for U.S. patent 
documents), and whether applicant or patentee is aware of any 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding that is not among applicant's 
or patentee's records.
    (3) If applicant or patentee does not possess any record of the 
correspondence between the Office and the applicant or patentee for such 
application, patent, or other proceeding, applicant or patentee must 
comply with a notice under this section by providing a statement that 
applicant or patentee does not possess any record of the correspondence 
between the Office and the applicant or patentee for such application, 
patent, or other proceeding.
    (b) With regard to a pending application, failure to comply with one 
of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time 
period set in the notice will result in abandonment of the application.

[65 FR 69451, Nov. 17, 2000]

                   Protests and Public Use Proceedings

Sec. 1.291  Protests by the public against pending applications.

    (a) Protests by a member of the public against pending applications 
will be referred to the examiner having charge of the subject matter 
involved. A protest specifically identifying the application to which 
the protest is directed will be entered in the application file if:
    (1) The protest is submitted prior to the date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first; and
    (2) The protest is either served upon the applicant in accordance 
with Sec. 1.248, or filed with the Office in duplicate in the event 
service is not possible.
    (b) Protests raising fraud or other inequitable conduct issues will 
be entered in the application file, generally without comment on those 
issues. Protests which do not adequately identify a pending patent 
application will be returned to the protestor and will not be further 
considered by the Office. A protest submitted in accordance with the 
second sentence of paragraph (a) of this section will be considered by 
the Office if the application is still pending when the protest and 
application file are brought before the examiner and it includes:
    (1) A listing of the patents, publications, or other information 
relied upon;
    (2) A concise explanation of the relevance of each listed item;
    (3) A copy of each listed patent or publication or other item of 
information in written form or at least the pertinent portions thereof; 
and
    (4) An English language translation of all the necessary and 
pertinent parts

[[Page 102]]

of any non-English language patent, publication, or other item of 
information in written form relied upon.
    (c) A member of the public filing a protest in an application under 
paragraph (a) of this section will not receive any communications from 
the Office relating to the protest, other than the return of a self-
addressed postcard which the member of the public may include with the 
protest in order to receive an acknowledgment by the Office that the 
protest has been received. In the absence of a request by the Office, an 
applicant has no duty to, and need not, reply to a protest. The limited 
involvement of the member of the public filing a protest pursuant to 
paragraph (a) of this section ends with the filing of the protest, and 
no further submission on behalf of the protestor will be considered, 
except for additional prior art, or unless such submission raises new 
issues which could not have been earlier presented.

[47 FR 21752, May 19, 1982, as amended at 57 FR 2035, Jan. 17, 1992; 61 
FR 42806, Aug. 19, 1996; 62 FR 53198, Oct. 10, 1997; 65 FR 57060, Sept. 
20, 2000]

Sec. 1.292  Public use proceedings.

    (a) When a petition for the institution of public use proceedings, 
supported by affidavits or declarations is found, on reference to the 
examiner, to make a prima facie showing that the invention claimed in an 
application believed to be on file had been in public use or on sale 
more than one year before the filing of the application, a hearing may 
be had before the Commissioner to determine whether a public use 
proceeding should be instituted. If instituted, the Commissioner may 
designate an appropriate official to conduct the public use proceeding, 
including the setting of times for taking testimony, which shall be 
taken as provided by Secs. 1.671 through 1.685. The petitioner will be 
heard in the proceedings but after decision therein will not be heard 
further in the prosecution of the application for patent.
    (b) The petition and accompanying papers, or a notice that such a 
petition has been filed, shall be entered in the application file if:
    (1) The petition is accompanied by the fee set forth in 
Sec. 1.17(j);
    (2) The petition is served on the applicant in accordance with 
Sec. 1.248, or filed with the Office in duplicate in the event service 
is not possible; and
    (3) The petition is submitted prior to the date the application was 
published or the mailing of a notice of allowance under Sec. 1.311, 
whichever occurs first.
    (c) A petition for institution of public use proceedings shall not 
be filed by a party to an interference as to an application involved in 
the interference. Public use and on sale issues in an interference shall 
be raised by a preliminary motion under Sec. 1.633(a).


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

[42 FR 5595, Jan. 28, 1977, as amended at 49 FR 48454, Dec. 12, 1984; 61 
FR 42807, Aug. 19, 1996; 65 FR 57060, Sept. 20, 2000]

Sec. 1.293  Statutory invention registration.

    (a) An applicant for an original patent may request, at any time 
during the pendency of applicant's pending complete application, that 
the specification and drawings be published as a statutory invention 
registration. Any such request must be signed by (1) the applicant and 
any assignee of record or (2) an attorney or agent of record in the 
application.
    (b) Any request for publication of a statutory invention 
registration must include the following parts:
    (1) A waiver of the applicant's right to receive a patent on the 
invention claimed effective upon the date of publication of the 
statutory invention registration;
    (2) The required fee for filing a request for publication of a 
statutory invention registration as provided for in Sec. 1.17 (n) or 
(o);
    (3) A statement that, in the opinion of the requester, the 
application to which the request is directed meets the requirements of 
35 U.S.C. 112; and
    (4) A statement that, in the opinion of the requester, the 
application to which the request is directed complies with the formal 
requirements of this part for printing as a patent.
    (c) A waiver filed with a request for a statutory invention 
registration will be effective, upon publication of the statutory 
invention registration, to waive the inventor's right to receive a

[[Page 103]]

patent on the invention claimed in the statutory invention registration, 
in any application for an original patent which is pending on, or filed 
after, the date of publication of the statutory invention registration. 
A waiver filed with a request for a statutory invention registration 
will not affect the rights of any other inventor even if the subject 
matter of the statutory invention registration and an application of 
another inventor are commonly owned. A waiver filed with a request for a 
statutory invention registration will not affect any rights in a patent 
to the inventor which issued prior to the date of publication of the 
statutory invention registration unless a reissue application is filed 
seeking to enlarge the scope of the claims of the patent. See also 
Sec. 1.104(c)(5).

(Approved by the Office of Management and Budget under control number 
0651-0018)

[50 FR 9382, Mar. 7, 1985, as amended at 62 FR 53198, Oct. 10, 1997]

Sec. 1.294  Examination of request for publication of a statutory 
          invention registration and patent application to which the 
          request is directed.

    (a) Any request for a statutory invention registration will be 
examined to determine if the requirements of Sec. 1.293 have been met. 
The application to which the request is directed will be examined to 
determine (1) if the subject matter of the application is appropriate 
for publication, (2) if the requirements for publication are met, and 
(3) if the requirements of 35 U.S.C. 112 and Sec. 1.293 of this part are 
met.
    (b) Applicant will be notified of the results of the examination set 
forth in paragraph (a) of this section. If the requirements of 
Sec. 1.293 and this section are not met by the request filed, the 
notification to applicant will set a period of time within which to 
comply with the requirements in order to avoid abandonment of the 
application. If the application does not meet the requirements of 35 
U.S.C. 112, the notification to applicant will include a rejection under 
the appropriate provisions of 35 U.S.C. 112. The periods for reply 
established pursuant to this section are subject to the extension of 
time provisions of Sec. 1.136. After reply by the applicant, the 
application will again be considered for publication of a statutory 
invention registration. If the requirements of Sec. 1.293 and this 
section are not timely met, the refusal to publish will be made final. 
If the requirements of 35 U.S.C. 112 are not met, the rejection pursuant 
to 35 U.S.C. 112 will be made final.
    (c) If the examination pursuant to this section results in approval 
of the request for a statutory invention registration the applicant will 
be notified of the intent to publish a statutory invention registration.

[50 FR 9382, Mar. 7, 1985, as amended at 62 FR 53198, Oct. 10, 1997]

Sec. 1.295  Review of decision finally refusing to publish a statutory 
          invention registration.

    (a) Any requester who is dissatisfied with the final refusal to 
publish a statutory invention registration for reasons other than 
compliance with 35 U.S.C. 112 may obtain review of the refusal to 
publish the statutory invention registration by filing a petition to the 
Commissioner accompanied by the fee set forth in Sec. 1.17(h) within one 
month or such other time as is set in the decision refusing publication. 
Any such petition should comply with the requirements of Sec. 1.181(b). 
The petition may include a request that the petition fee be refunded if 
the final refusal to publish a statutory invention registration for 
reasons other than compliance with 35 U.S.C. 112 is determined to result 
from an error by the Patent and Trademark Office.
    (b) Any requester who is dissatisfied with a decision finally 
rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the 
decision by filing an appeal to the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.191. If the decision rejecting claims 
pursuant to 35 U.S.C. 112 is reversed, the request for a statutory 
invention registration will be approved and the registration published 
if all of the other provisions of Sec. 1.293 and this section are met.

(Approved by the Office of Management and Budget under control number 
0651-0018)

[50 FR 9382, Mar. 7, 1985]

[[Page 104]]

Sec. 1.296  Withdrawal of request for publication of statutory invention 
          registration.

    A request for a statutory invention registration, which has been 
filed, may be withdrawn prior to the date of the notice of the intent to 
publish a statutory invention registration issued pursuant to 
Sec. 1.294(c) by filing a request to withdraw the request for 
publication of a statutory invention registration. The request to 
withdraw may also include a request for a refund of any amount paid in 
excess of the application filing fee and a handling fee of $130.00 which 
will be retained. Any request to withdraw the request for publication of 
a statutory invention registration filed on or after the date of the 
notice of intent to publish issued pursuant to Sec. 1.294(c) must be in 
the form of a petition pursuant to Sec. 1.183 accompanied by the fee set 
forth in Sec. 1.17(h).

[56 FR 65153, Dec. 13, 1991]

Sec. 1.297  Publication of statutory invention registration.

    (a) If the request for a statutory invention registration is 
approved the statutory invention registration will be published. The 
statutory invention registration will be mailed to the requester at the 
correspondence address as provided for in Sec. 1.33(a). A notice of the 
publication of each statutory invention registration will be published 
in the Official Gazette.
    (b) Each statutory invention registration published will include a 
statement relating to the attributes of a statutory invention 
registration. The statement will read as follows:

    A statutory invention registration is not a patent. It has the 
defensive attributes of a patent but does not have the enforceable 
attributes of a patent. No article or advertisement or the like may use 
the term patent, or any term suggestive of a patent, when referring to a 
statutory invention registration. For more specific information on the 
rights associated with a statutory invention registration see 35 U.S.C. 
157.

[50 FR 9383, Mar. 7, 1985, as amended at 50 FR 31826, Aug. 6, 1985]

        Review of Patent and Trademark Office Decisions by Court

Sec. 1.301  Appeal to U.S. Court of Appeals for the Federal Circuit.

    Any applicant or any owner of a patent involved in any ex parte 
reexamination proceeding filed under Sec. 1.510, dissatisfied with the 
decision of the Board of Patent Appeals and Interferences, and any party 
to an interference dissatisfied with the decision of the Board of Patent 
Appeals and Interferences, may appeal to the U.S. Court of Appeals for 
the Federal Circuit. The appellant must take the following steps in such 
an appeal: In the U. S. Patent and Trademark Office, file a written 
notice of appeal directed to the Commissioner (see Secs. 1.302 and 
1.304); and in the Court, file a copy of the notice of appeal and pay 
the fee for appeal as provided by the rules of the Court. For inter 
partes reexamination proceedings filed under Sec. 1.913, Sec. 1.983 is 
controlling.

[65 FR 76774, Dec. 7, 2000]

Sec. 1.302  Notice of appeal.

    (a) When an appeal is taken to the U.S. Court of Appeals for the 
Federal Circuit, the appellant shall give notice thereof to the 
Commissioner within the time specified in Sec. 1.304.
    (b) In interferences, the notice must be served as provided in 
Sec. 1.646.
    (c) A notice of appeal, if mailed to the Office, shall be addressed 
as follows: Box 8, Commissioner of Patents and Trademarks, Washington, 
DC 20231.

[50 FR 9383, Mar. 7, 1985, as amended at 53 FR 16414, May 9, 1988]

Sec. 1.303  Civil action under 35 U.S.C. 145, 146, 306.

    (a) Any applicant or any owner of a patent involved in an ex parte 
reexamination proceeding filed under Sec. 1.510 for a patent that issues 
from an original application filed in the United States before November 
29, 1999, dissatisfied with the decision of the Board of Patent Appeals 
and Interferences, and any party to an interference dissatisfied with 
the decision of the Board of Patent Appeals and Interferences may, 
instead of appealing to the U.S. Court

[[Page 105]]

of Appeals for the Federal Circuit (Sec. 1.301), have remedy by civil 
action under 35 U.S.C. 145 or 146, as appropriate. Such civil action 
must be commenced within the time specified in Sec. 1.304.
    (b) If an applicant in an ex parte case or an owner of a patent 
involved in an ex parte reexamination proceeding filed under Sec. 1.510 
for a patent that issues from an original application filed in the 
United States before November 29, 1999, has taken an appeal to the U.S. 
Court of Appeals for the Federal Circuit, he or she thereby waives his 
or her right to proceed under 35 U.S.C. 145.
    (c) If any adverse party to an appeal taken to the U.S. Court of 
Appeals for the Federal Circuit by a defeated party in an interference 
proceeding files notice with the Commissioner within twenty days after 
the filing of the defeated party's notice of appeal to the court 
(Sec. 1.302), that he or she elects to have all further proceedings 
conducted as provided in 35 U.S.C. 146, the notice of election must be 
served as provided in Sec. 1.646.
    (d) For an ex parte reexamination proceeding filed under Sec. 1.510 
for a patent that issues from an original application filed in the 
United States on or after November 29, 1999, and for an inter partes 
reexamination proceeding filed under Sec. 1.913, no remedy by civil 
action under 35 U.S.C. 145 is available.

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

[47 FR 47381, Oct. 26, 1982, as amended at 49 FR 48454, Dec. 12, 1984; 
54 FR 29553, July 13, 1989; 65 FR 54676, Sept. 8, 2000; 65 FR 76774, 
Dec. 7, 2000]

Sec. 1.304  Time for appeal or civil action.

    (a)(1) The time for filing the notice of appeal to the U.S. Court of 
Appeals for the Federal Circuit (Sec. 1.302) or for commencing a civil 
action (Sec. 1.303) is two months from the date of the decision of the 
Board of Patent Appeals and Interferences. If a request for rehearing or 
reconsideration of the decision is filed within the time period provided 
under Sec. 1.197(b), Sec. 1.658(b), or Sec. 1.979(a), the time for 
filing an appeal or commencing a civil action shall expire two months 
after action on the request. In interferences the time for filing a 
cross-appeal or cross-action expires:
    (i) Fourteen days after service of the notice of appeal or the 
summons and complaint; or
    (ii) Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.
    (2) The time periods set forth in this section are not subject to 
the provisions of Sec. 1.136, Sec. 1.550(c), Sec. 1.956, or 
Sec. 1.645(a) or (b).
    (3) The Commissioner may extend the time for filing an appeal or 
commencing a civil action:
    (i) For good cause shown if requested in writing before the 
expiration of the period for filing an appeal or commencing a civil 
action, or
    (ii) Upon written request after the expiration of the period for 
filing an appeal or commencing a civil action upon a showing that the 
failure to act was the result of excusable neglect.
    (b) The times specified in this section in days are calendar days. 
The times specified herein in months are calendar months except that one 
day shall be added to any two-month period which includes February 28. 
If the last day of the time specified for appeal or commencing a civil 
action falls on a Saturday, Sunday or Federal holiday in the District of 
Columbia, the time is extended to the next day which is neither a 
Saturday, Sunday nor a Federal holiday.
    (c) If a defeated party to an interference has taken an appeal to 
the U.S. Court of Appeals for the Federal Circuit and an adverse party 
has filed notice under 35 U.S.C. 141 electing to have all further 
proceedings conducted under 35 U.S.C. 146 (Sec. 1.303(c)), the time for 
filing a civil action thereafter is specified in 35 U.S.C. 141. The time 
for filing a cross-action expires 14 days after service of the summons 
and complaint.

[54 FR 29553, July 13, 1989, as amended at 58 FR 54502, Oct. 22, 1993; 
62 FR 53198, Oct. 10, 1997; 65 FR 76774, Dec. 7, 2000]

                      Allowance and Issue of Patent

Sec. 1.311  Notice of allowance.

    (a) If, on examination, it appears that the applicant is entitled to 
a patent under the law, a notice of allowance will be sent to the 
applicant at the correspondence address indicated

[[Page 106]]

in Sec. 1.33. The notice of allowance shall specify a sum constituting 
the issue fee which must be paid within three months from the date of 
mailing of the notice of allowance to avoid abandonment of the 
application. The sum specified in the notice of allowance may also 
include the publication fee, in which case the issue fee and publication 
fee (Sec. 1.211(f)) must both be paid within three months from the date 
of mailing of the notice of allowance to avoid abandonment of the 
application. This three-month period is not extendable.
    (b) An authorization to charge the issue or other post-allowance 
fees set forth in Sec. 1.18 to a deposit account may be filed in an 
individual application only after mailing of the notice of allowance. 
The submission of either of the following after the mailing of a notice 
of allowance will operate as a request to charge the correct issue fee 
to any deposit account identified in a previously filed authorization to 
charge fees:
    (1) An incorrect issue fee; or
    (2) A completed Office-provided issue fee transmittal form (where no 
issue fee has been submitted).

[65 FR 57060, Sept. 20, 2000]

Sec. 1.312  Amendments after allowance.

    No amendment may be made as a matter of right in an application 
after the mailing of the notice of allowance. Any amendment filed 
pursuant to this section must be filed before or with the payment of the 
issue fee, and may be entered on the recommendation of the primary 
examiner, approved by the Commissioner, without withdrawing the 
application from issue.

[65 FR 14873, Mar. 20, 2000]

Sec. 1.313  Withdrawal from issue.

    (a) Applications may be withdrawn from issue for further action at 
the initiative of the Office or upon petition by the applicant. To 
request that the Office withdraw an application from issue, applicant 
must file a petition under this section including the fee set forth in 
Sec. 1.17(h) and a showing of good and sufficient reasons why withdrawal 
of the application from issue is necessary. A petition under this 
section is not required if a request for continued examination under 
Sec. 1.114 is filed prior to payment of the issue fee. If the Office 
withdraws the application from issue, the Office will issue a new notice 
of allowance if the Office again allows the application.
    (b) Once the issue fee has been paid, the Office will not withdraw 
the application from issue at its own initiative for any reason except:
    (1) A mistake on the part of the Office;
    (2) A violation of Sec. 1.56 or illegality in the application;
    (3) Unpatentability of one or more claims; or
    (4) For interference.
    (c) Once the issue fee has been paid, the application will not be 
withdrawn from issue upon petition by the applicant for any reason 
except:
    (1) Unpatentability of one of more claims, which petition must be 
accompanied by an unequivocal statement that one or more claims are 
unpatentable, an amendment to such claim or claims, and an explanation 
as to how the amendment causes such claim or claims to be patentable;
    (2) Consideration of a request for continued examination in 
compliance with Sec. 1.114; or
    (3) Express abandonment of the application. Such express abandonment 
may be in favor of a continuing application.
    (d) A petition under this section will not be effective to withdraw 
the application from issue unless it is actually received and granted by 
the appropriate officials before the date of issue. Withdrawal of an 
application from issue after payment of the issue fee may not be 
effective to avoid publication of application information.

[65 FR 14873, Mar. 20, 2000, as amended at 65 FR 50105, Aug. 16, 2000]

Sec. 1.314  Issuance of patent.

    If applicant timely pays the issue fee, the Office will issue the 
patent in regular course unless the application is withdrawn from issue 
(Sec. 1.313) or the Office defers issuance of the patent. To request 
that the Office defer issuance of a patent, applicant must file a 
petition under this section including the fee set forth in Sec. 1.17(h) 
and a showing of good and sufficient reasons why it is

[[Page 107]]

necessary to defer issuance of the patent.

[65 FR 54677, Sept. 8, 2000]

Sec. 1.315  Delivery of patent.

    The patent will be delivered or mailed upon issuance to the 
correspondence address of record. See Sec. 1.33(a).

[61 FR 42807, Aug. 19, 1996]

Sec. 1.316  Application abandoned for failure to pay issue fee.

    If the issue fee is not paid within three months from the date of 
the notice of allowance, the application will be regarded as abandoned. 
Such an abandoned application will not be considered as pending before 
the Patent and Trademark Office.

[62 FR 53198, Oct. 10, 1997]

Sec. 1.317  Lapsed patents; delayed payment of balance of issue fee.

    If the issue fee paid is the amount specified in the notice of 
allowance, but a higher amount is required at the time the issue fee is 
paid, any remaining balance of the issue fee is to be paid within three 
months from the date of notice thereof and, if not paid, the patent will 
lapse at the termination of the three-month period.

[62 FR 53198, Oct. 10, 1997]

Sec. 1.318  [Reserved]

                               Disclaimer

Sec. 1.321  Statutory disclaimers, including terminal disclaimers.

    (a) A patentee owning the whole or any sectional interest in a 
patent may disclaim any complete claim or claims in a patent. In like 
manner any patentee may disclaim or dedicate to the public the entire 
term, or any terminal part of the term, of the patent granted. Such 
disclaimer is binding upon the grantee and its successors or assigns. A 
notice of the disclaimer is published in the Official Gazette and 
attached to the printed copies of the specification. The disclaimer, to 
be recorded in the Patent and Trademark Office, must:
    (1) Be signed by the patentee, or an attorney or agent of record;
    (2) Identify the patent and complete claim or claims, or term being 
disclaimed. A disclaimer which is not a disclaimer of a complete claim 
or claims, or term will be refused recordation;
    (3) State the present extent of patentee's ownership interest in the 
patent; and
    (4) Be accompanied by the fee set forth in Sec. 1.20(d).
    (b) An applicant or assignee may disclaim or dedicate to the public 
the entire term, or any terminal part of the term, of a patent to be 
granted. Such terminal disclaimer is binding upon the grantee and its 
successors or assigns. The terminal disclaimer, to be recorded in the 
Patent and Trademark Office, must:
    (1) Be signed:
    (i) By the applicant, or
    (ii) If there is an assignee of record of an undivided part 
interest, by the applicant and such assignee, or
    (iii) If there is an assignee of record of the entire interest, by 
such assignee, or
    (iv) By an attorney or agent of record;
    (2) Specify the portion of the term of the patent being disclaimed;
    (3) State the present extent of applicant's or assignee's ownership 
interest in the patent to be granted; and
    (4) Be accompanied by the fee set forth in Sec. 1.20(d).
    (c) A terminal disclaimer, when filed to obviate a judicially 
created double patenting rejection in a patent application or in a 
reexamination proceeding, must:
    (1) Comply with the provisions of paragraphs (b)(2) through (b)(4) 
of this section;
    (2) Be signed in accordance with paragraph (b)(1) of this section if 
filed in a patent application or in accordance with paragraph (a)(1) of 
this section if filed in a reexamination proceeding; and
    (3) Include a provision that any patent granted on that application 
or any patent subject to the reexamination proceeding shall be 
enforceable only for and during such period that said

[[Page 108]]

patent is commonly owned with the application or patent which formed the 
basis for the rejection.

[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996]

                     Correction of Errors in Patent

Sec. 1.322  Certificate of correction of Office mistake.

    (a)(1) The Commissioner may issue a certificate of correction 
pursuant to 35 U.S.C. 254 to correct a mistake in a patent, incurred 
through the fault of the Office, which mistake is clearly disclosed in 
the records of the Office:
    (i) At the request of the patentee or the patentee's assignee;
    (ii) Acting sua sponte for mistakes that the Office discovers; or
    (iii) Acting on information about a mistake supplied by a third 
party.
    (2)(i) There is no obligation on the Office to act on or respond to 
a submission of information or request to issue a certificate of 
correction by a third party under paragraph (a)(1)(iii) of this section.
    (ii) Papers submitted by a third party under this section will not 
be made of record in the file that they relate to nor be retained by the 
Office.
    (3) If the request relates to a patent involved in an interference, 
the request must comply with the requirements of this section and be 
accompanied by a motion under Sec. 1.635.
    (4) The Office will not issue a certificate of correction under this 
section without first notifying the patentee (including any assignee of 
record) at the correspondence address of record as specified in 
Sec. 1.33(a) and affording the patentee or an assignee an opportunity to 
be heard.
    (b) If the nature of the mistake on the part of the Office is such 
that a certificate of correction is deemed inappropriate in form, the 
Commissioner may issue a corrected patent in lieu thereof as a more 
appropriate form for certificate of correction, without expense to the 
patentee.

(35 U.S.C. 254)

[24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48454, Dec. 12, 1984; 
65 FR 54677, Sept. 8, 2000]

Sec. 1.323  Certificate of correction of applicant's mistake.

    The Office may issue a certificate of correction under the 
conditions specified in 35 U.S.C. 255 at the request of the patentee or 
the patentee's assignee, upon payment of the fee set forth in 
Sec. 1.20(a). If the request relates to a patent involved in an 
interference, the request must comply with the requirements of this 
section and be accompanied by a motion under Sec. 1.635.

[65 FR 54677, Sept. 8, 2000]

Sec. 1.324  Correction of inventorship in patent, pursuant to 35 U.S.C. 
          256.

    (a) Whenever through error a person is named in an issued patent as 
the inventor, or through error an inventor is not named in an issued 
patent and such error arose without any deceptive intention on his or 
her part, the Commissioner may, on petition, or on order of a court 
before which such matter is called in question, issue a certificate 
naming only the actual inventor or inventors. A petition to correct 
inventorship of a patent involved in an interference must comply with 
the requirements of this section and must be accompanied by a motion 
under Sec. 1.634.
    (b) Any petition pursuant to paragraph (a) of this section must be 
accompanied by:
    (1) Where one or more persons are being added, a statement from each 
person who is being added as an inventor that the inventorship error 
occurred without any deceptive intention on his or her part;
    (2) A statement from the current named inventors who have not 
submitted a statement under paragraph (b)(1) of this section either 
agreeing to the change of inventorship or stating that they have no 
disagreement in regard to the requested change;
    (3) A statement from all assignees of the parties submitting a 
statement under paragraphs (b)(1) and (b)(2) of this section agreeing to 
the change of inventorship in the patent, which statement must comply 
with the requirements of Sec. 3.73(b) of this chapter; and
    (4) The fee set forth in Sec. 1.20(b).

[[Page 109]]

    (c) For correction of inventorship in an application see Secs. 1.48 
and 1.497, and in an interference see Sec. 1.634.

[62 FR 53199, Oct. 10, 1997, as amended at 65 FR 54677, Sept. 8, 2000]

Sec. 1.325  Other mistakes not corrected.

    Mistakes other than those provided for in Secs. 1.322, 1.323, 1.324, 
and not affording legal grounds for reissue or for reexamination, will 
not be corrected after the date of the patent.

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

[48 FR 2714, Jan. 20, 1983]

                           Arbitration Awards

Sec. 1.331-1.334  [Reserved]

Sec. 1.335  Filing of notice of arbitration awards.

    (a) Written notice of any award by an arbitrator pursuant to 35 
U.S.C. 294 must be filed in the Patent and Trademark Office by the 
patentee, or the patentee's assignee or licensee. If the award involves 
more than one patent a separate notice must be filed for placement in 
the file of each patent. The notice must set forth the patent number, 
the names of the inventor and patent owner, and the names and addresses 
of the parties to the arbitration. The notice must also include a copy 
of the award.
    (b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is 
modified by a court, the party requesting the modification must file in 
the Patent and Trademark Office, a notice of the modification for 
placement in the file of each patent to which the modification applies. 
The notice must set forth the patent number, the names of the inventor 
and patent owner, and the names and addresses of the parties to the 
arbitration. The notice must also include a copy of the court's order 
modifying the award.
    (c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be 
unenforceable until any notices required by paragraph (a) or (b) of this 
section are filed in the Patent and Trademark Office. If any required 
notice is not filed by the party designated in paragraph (a) or (b) of 
this section, any party to the arbitration proceeding may file such a 
notice.

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

[48 FR 2714, Jan. 20, 1983]

                           Amendment of Rules

Sec. 1.351  Amendments to rules will be published.

    All amendments to the regulations in this part will be published in 
the Official Gazette and in the Federal Register.

Sec. 1.352  [Reserved]

                            Maintenance Fees

Sec. 1.362  Time for payment of maintenance fees.

    (a) Maintenance fees as set forth in Secs. 1.20 (e) through (g) are 
required to be paid in all patents based on applications filed on or 
after December 12, 1980, except as noted in paragraph (b) of this 
section, to maintain a patent in force beyond 4, 8 and 12 years after 
the date of grant.
    (b) Maintenance fees are not required for any plant patents or for 
any design patents. Maintenance fees are not required for a reissue 
patent if the patent being reissued did not require maintenance fees.
    (c) The application filing dates for purposes of payment of 
maintenance fees are as follows:
    (1) For an application not claiming benefit of an earlier 
application, the actual United States filing date of the application.
    (2) For an application claiming benefit of an earlier foreign 
application under 35 U.S.C. 119, the United States filing date of the 
application.
    (3) For a continuing (continuation, division, continuation-in-part) 
application claiming the benefit of a prior patent application under 35 
U.S.C. 120, the actual United States filing date of the continuing 
application.
    (4) For a reissue application, including a continuing reissue 
application claiming the benefit of a reissue application under 35 
U.S.C. 120, United States filing date of the original non-reissue 
application on which the patent reissued is based.

[[Page 110]]

    (5) For an international application which has entered the United 
States as a Designated Office under 35 U.S.C. 371, the international 
filing date granted under Article 11(1) of the Patent Cooperation Treaty 
which is considered to be the United States filing date under 35 U.S.C. 
363.
    (d) Maintenance fees may be paid in patents without surcharge during 
the periods extending respectively from:
    (1) 3 years through 3 years and 6 months after grant for the first 
maintenance fee,
    (2) 7 years through 7 years and 6 months after grant for the second 
maintenance fee, and
    (3) 11 years through 11 years and 6 months after grant for the third 
maintenance fee.
    (e) Maintenance fees may be paid with the surcharge set forth in 
Sec. 1.20(h) during the respective grace periods after:
    (1) 3 years and 6 months and through the day of the 4th anniversary 
of the grant for the first maintenance fee.
    (2) 7 years and 6 months and through the day of the 8th anniversary 
of the grant for the second maintenance fee, and
    (3) 11 years and 6 months and through the day of the 12th 
anniversary of the grant for the third maintenance fee.
    (f) If the last day for paying a maintenance fee without surcharge 
set forth in paragraph (d) of this section, or the last day for paying a 
maintenance fee with surcharge set forth in paragraph (e) of this 
section, falls on a Saturday, Sunday, or a federal holiday within the 
District of Columbia, the maintenance fee and any necessary surcharge 
may be paid under paragraph (d) or paragraph (e) respectively on the 
next succeeding day which is not a Saturday, Sunday, or federal holiday.
    (g) Unless the maintenance fee and any applicable surcharge is paid 
within the time periods set forth in paragraphs (d), (e) or (f) of this 
section, the patent will expire as of the end of the grace period set 
forth in paragraph (e) of this section. A patent which expires for the 
failure to pay the maintenance fee will expire at the end of the same 
date (anniversary date) the patent was granted in the 4th, 8th, or 12th 
year after grant.
    (h) The periods specified in Secs. 1.362 (d) and (e) with respect to 
a reissue application, including a continuing reissue application 
thereof, are counted from the date of grant of the original non-reissue 
application on which the reissued patent is based.

[49 FR 34724, Aug. 31, 1984, as amended at 56 FR 65154, Dec. 13, 1991; 
58 FR 54511, Oct. 22, 1993]

Sec. 1.363  Fee address for maintenance fee purposes.

    (a) All notices, receipts, refunds, and other communications 
relating to payment or refund of maintenance fees will be directed to 
the correspondence address used during prosecution of the application as 
indicated in Sec. 1.33(a) unless:
    (1) A fee address for purposes of payment of maintenance fees is set 
forth when submitting the issue fee, or
    (2) A change in the correspondence address for all purposes is filed 
after payment of the issue fee, or
    (3) A fee address or a change in the ``fee address'' is filed for 
purposes of receiving notices, receipts and other correspondence 
relating to the payment of maintenance fees after the payment of the 
issue fee, in which instance, the latest such address will be used.
    (b) An assignment of a patent application or patent does not result 
in a change of the ``correspondence address'' or ``fee address'' for 
maintenance fee purposes.

[49 FR 34725, Aug. 31, 1984]

Sec. 1.366  Submission of maintenance fees.

    (a) The patentee may pay maintenance fees and any necessary 
surcharges, or any person or organization may pay maintenance fees and 
any necessary surcharges on behalf of a patentee. Authorization by the 
patentee need not be filed in the Patent and Trademark Office to pay 
maintenance fees and any necessary surcharges on behalf of the patentee.
    (b) A maintenance fee and any necessary surcharge submitted for a 
patent must be submitted in the amount due on the date the maintenance 
fee and any necessary surcharge are paid. A maintenance fee or surcharge 
may be paid in the manner set forth in Sec. 1.23 or

[[Page 111]]

by an authorization to charge a deposit account established pursuant to 
Sec. 1.25. Payment of a maintenance fee and any necessary surcharge or 
the authorization to charge a deposit account must be submitted within 
the periods set forth in Sec. 1.362 (d), (e), or (f). Any payment or 
authorization of maintenance fees and surcharges filed at any other time 
will not be accepted and will not serve as a payment of the maintenance 
fee except insofar as a delayed payment of the maintenance fee is 
accepted by the Commissioner in an expired patent pursuant to a petition 
filed under Sec. 1.378. Any authorization to charge a deposit account 
must authorize the immediate charging of the maintenance fee and any 
necessary surcharge to the deposit account. Payment of less than the 
required amount, payment in a manner other than that set forth 
Sec. 1.23, or in the filing of an authorization to charge a deposit 
account having insufficient funds will not constitute payment of a 
maintenance fee or surcharge on a patent. The procedures set forth in 
Sec. 1.8 or Sec. 1.10 may be utilized in paying maintenance fees and any 
necessary surcharges.
    (c) In submitting maintenance fees and any necessary surcharges, 
identification of the patents for which maintenance fees are being paid 
must include the patent number, and the application number of the United 
States application for the patent on which the maintenance fee is being 
paid. If the payment includes identification of only the patent number 
(i.e., does not identify the application number of the United States 
application for the patent on which the maintenance fee is being paid), 
the Office may apply the payment to the patent identified by patent 
number in the payment or may return the payment.
    (d) Payment of maintenance fees and any surcharges should identify 
the fee being paid for each patent as to whether it is the 3\1/2\-, 7\1/
2\-, or 11\1/2\-year fee, whether small entity status is being changed 
or claimed, the amount of the maintenance fee and any surcharge being 
paid, and any assigned customer number. If the maintenance fee and any 
necessary surcharge is being paid on a reissue patent, the payment must 
identify the reissue patent by reissue patent number and reissue 
application number as required by paragraph (c) of this section and 
should also include the original patent number.
    (e) Maintenance fee payments and surcharge payments relating thereto 
must be submitted separate from any other payments for fees or charges, 
whether submitted in the manner set forth in Sec. 1.23 or by an 
authorization to charge a deposit account. If maintenance fee and 
surcharge payments for more than one patent are submitted together, they 
should be submitted on as few sheets as possible with the patent numbers 
listed in increasing patent number order. If the payment submitted is 
insufficient to cover the maintenance fees and surcharges for all the 
listed patents, the payment will be applied in the order the patents are 
listed, beginning at the top of the listing.
    (f) Notification of any change in status resulting in loss of 
entitlement to small entity status must be filed in a patent prior to 
paying, or at the time of paying, the earliest maintenance fee due after 
the date on which status as a small entity is no longer appropriate. See 
Sec. 1.27(g).
    (g) Maintenance fees and surcharges relating thereto will not be 
refunded except in accordance with Secs. 1.26 and 1.28(a).

[49 FR 34725, Aug. 31, 1984, as amended at 58 FR 54503, Oct. 22, 1993; 
62 FR 53199, Oct. 10, 1997; 65 FR 54677, Sept. 8, 2000; 65 FR 78960, 
Dec. 18, 2000]

Sec. 1.377  Review of decision refusing to accept and record payment of 
          a maintenance fee filed prior to expiration of patent.

    (a) Any patentee who is dissatisfied with the refusal of the Patent 
and Trademark Office to accept and record a maintenance fee which was 
filed prior to the expiration of the patent may petition the 
Commissioner to accept and record the maintenance fee.
    (b) Any petition under this section must be filed within 2 months of 
the action complained of, or within such other time as may be set in the 
action complained of, and must be accompanied by the fee set forth in 
Sec. 1.17(h). The petition may include a request that the petition fee 
be refunded if the

[[Page 112]]

refusal to accept and record the maintenance fee is determined to result 
from an error by the Patent and Trademark Office.
    (c) Any petition filed under this section must comply with the 
requirements of Sec. 1.181(b) and must be signed by an attorney or agent 
registered to practice before the Patent and Trademark Office, or by the 
patentee, the assignee, or other party in interest.

[49 FR 34725, Aug. 31, 1984, as amended at 62 FR 53199, Oct. 10, 1997]

Sec. 1.378  Acceptance of delayed payment of maintenance fee in expired 
          patent to reinstate patent.

    (a) The Commissioner may accept the payment of any maintenance fee 
due on a patent after expiration of the patent if, upon petition, the 
delay in payment of the maintenance fee is shown to the satisfaction of 
the Commissioner to have been unavoidable (paragraph (b) of this 
section) or unintentional (paragraph (c) of this section) and if the 
surcharge required by Sec. 1.20(i) is paid as a condition of accepting 
payment of the maintenance fee. If the Commissioner accepts payment of 
the maintenance fee upon petition, the patent shall be considered as not 
having expired, but will be subject to the conditions set forth in 35 
U.S.C. 41(c)(2).
    (b) Any petition to accept an unavoidably delayed payment of a 
maintenance fee filed under paragraph (a) of this section must include:
    (1) The required maintenance fee set forth in Sec. 1.20 (e) through 
(g);
    (2) The surcharge set forth in Sec. 1.20(i)(1); and
    (3) A showing that the delay was unavoidable since reasonable care 
was taken to ensure that the maintenance fee would be paid timely and 
that the petition was filed promptly after the patentee was notified of, 
or otherwise became aware of, the expiration of the patent. The showing 
must enumerate the steps taken to ensure timely payment of the 
maintenance fee, the date and the manner in which patentee became aware 
of the expiration of the patent, and the steps taken to file the 
petition promptly.
    (c) Any petition to accept an unintentionally delayed payment of a 
maintenance fee filed under paragraph (a) of this section must be filed 
within twenty-four months after the six-month grace period provided in 
Sec. 1.362(e) and must include:
    (1) The required maintenance fee set forth in Sec. 1.20 (e) through 
(g);
    (2) The surcharge set forth in Sec. 1.20(i)(2); and
    (3) A statement that the delay in payment of the maintenance fee was 
unintentional.
    (d) Any petition under this section must be signed by an attorney or 
agent registered to practice before the Patent and Trademark Office, or 
by the patentee, the assignee, or other party in interest.
    (e) Reconsideration of a decision refusing to accept a maintenance 
fee upon petition filed pursuant to paragraph (a) of this section may be 
obtained by filing a petition for reconsideration within two months of, 
or such other time as set in, the decision refusing to accept the 
delayed payment of the maintenance fee. Any such petition for 
reconsideration must be accompanied by the petition fee set forth in 
Sec. 1.17(h). After decision on the petition for reconsideration, no 
further reconsideration or review of the matter will be undertaken by 
the Commissioner. If the delayed payment of the maintenance fee is not 
accepted, the maintenance fee and the surcharge set forth in 
Sec. 1.20(i) will be refunded following the decision on the petition for 
reconsideration, or after the expiration of the time for filing such a 
petition for reconsideration, if none is filed. Any petition fee under 
this section will not be refunded unless the refusal to accept and 
record the maintenance fee is determined to result from an error by the 
Patent and Trademark Office.

[49 FR 34726, Aug. 31, 1984, as amended at 50 FR 9383, Mar. 7, 1985; 58 
FR 44282, Aug. 20, 1993; 62 FR 53199, Oct. 10, 1997]
